Appeal No. 97-0345
Application 08/363,094
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
In regard to the rejection of claims 48 through 59 under
35 U.S.C. § 103 as being unpatentable over Mulready, Ritter
and Sato, Appellants argue at the top of pages 7 and 10 of the
brief that “[n]either Mulready, nor Ritter nor Sato anywhere
either discloses or suggests an ‘absorption spectroscopy
device’ or a ‘sample cell’”. These two elements are recited
in all independent claims. Appellants argue on page 15 of the
brief that the Examiner has therefor not established a prima
facie case of obviousness. The Examiner, on page 3 of the
answer, states that appellants describe, as well known, the
operation of an absorption spectroscopy device in the
background section
(pages 1-4) of their specification. However, neither the
background section, nor portions thereof, have been made part
of the prior art in the rejection. “Where a reference is
relied on to support a rejection, whether or not in a ‘minor
capacity,’ there would appear to be no excuse for not
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