Appeal No. 96-3728
Application No. 08/132,078
Gutterman, while claims 22 through 25 are rejected over this3
reference and further in view of Burroughs and Fayling.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellants and the examiner concerning these rejections.
OPINION
Neither of the rejections before us can be sustained.
As correctly indicated by the appellants, Gutterman
contains no teaching or suggestion of the coercivity feature
recited in independent claim 2. For this reason alone, we can
not sustain the examiner’s section 103 rejection of this claim
and of the claims which depend therefrom as being unpatentable
over Gutterman.
As for the section 103 rejection of claims 22 through 25
as being unpatentable over Gutterman in view of Burroughs and
Fayling, it is our determination that the examiner has failed
3In his exposition of this rejection on page 4 of the
answer, the examiner has referred to other references in
addition to Gutterman as support for his conclusion of
obviousness even though these other references are not
included in the statement of the rejection. This is
inappropriate as explained in the case of In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3. (CCPA 1970). As a
consequence, we have not considered these other references in
assessing the merits of the above noted rejection.
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