Appeal No. 97-2035
Application 08/161,234
In a supplemental examiner’s answer (Paper No. 23), the
examiner cited and additionally relied on the Japanese
reference Abo to show a claim feature which the examiner had
regarded as well known in the art. While we recognize that it
is inappropriate and improper to cite and rely on a reference
without expressly including it in the stated grounds of
rejection, since an applicant can be deprived of a fair
opportunity to respond, see, e.g., In re Hoch, 428 F.2d 1341,
1342, n.3, 166 USPQ 406, 407 n.1 (CCPA 1970), under the facts
of this case the applicants have had an opportunity to address
Abo and did in fact address the merits of Abo in a
supplemental reply brief (Paper No. 23). The applicants even
expressly stated what they regard as being taught by Abo,
i.e., “the new reference simply discloses a path from the disk
to the housing of the drive” (Paper No. 23, at page 2).
Accordingly, a summary reversal of the rejections is not
necessary here and we regard each of the above-noted grounds
of rejection as being further supplemented by the addition of
Abo.
The Invention
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