Appeal No. 1996-3078
Application 08/184,417
The following prior art is relied on by the examiner:
Applicants’ admitted prior art at page 2 to 3 and 8 of the specification:
Rosen et al. (Rosen) 5,202,875 April 13, 1993
Claims 1 to 29 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter of appellants’ invention (see page 2
of the final rejection).
Claims 1 to 29 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the
examiner relies appellants’ admitted prior art alone.
Claims 8 and 21 stand newly rejected in the Answer under 35 U.S.C. § 103 (Answer, page 9).
As evidence of obviousness, the examiner relies appellants’ admitted prior art in view of Rosen.
We note that while the Answer discusses Hedlund et al. and Yoshida et al. as teaching or
suggesting the salient features of dependent claims 10 and 23 on appeal (Answer, page 10), we note
that neither the statement of the rejection in the Answer (Answer, page 5), nor the statement in the Final
Rejection (Final Rejection, page 2), expressly rely upon Hedlund et al. or Yoshida et al. to reject claims
10 and 23. We note that even when a reference is relied upon in a minor capacity to support a
rejection, "there would appear to be no excuse for not positively including the reference in the statement
of rejection." In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
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