Appeal No. 1997-1162
Application 08/200,455
portion with ball-running grooves cut into the sleeve.
Appellant argues that Hishida is "not applied in the rejection
and thus cannot be considered unless prosecution is reopened"
(emphasis omitted) (Br12); see also Br17. Hishida is not part
of the rejection and cannot be considered. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970)
("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 positively including the reference in the
statement of the rejection."). Introducing references through
the "backdoor" is improper.
Nevertheless, we recommend that the Examiner consider
entering a new rejection using Hishida. Hishida, figure 1,
expressly discloses a one-piece integrally formed rotary
member 6 having rotor and sleeve portions where the sleeve has
a pair of ball-running grooves therein to act as outer races.
This is the teaching missing from the rejections on appeal.
Hishida, figure 10, also discloses an embodiment where a
bearing unit 316 has a sleeve member 318 which is secured to
the rotary member. Thus, Hishida would have taught one of
ordinary skill in the art that the sleeve forming the outer
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