Ex parte MERRILL et al. - Page 7

                 Appeal No. 98-2097                                                                                                                     
                 Application NO. 08/670,320                                                                                                             
                 rejection itself,  a rejection of appellants’ claims under3                                                                                                       
                 35 U.S.C. § 103 is unsound.                                                                                                            


                          The decision of the examiner is reversed.                                                                                     


                                                                    REVERSED                                                                            



                                                                                                  )                                                     
                                            IRWIN CHARLES COHEN                                            )                                            
                                            Administrative Patent Judge                           )                                                     
                                                                                                  )                                                     
                                                                                                  )                                                     
                                                                                                  ) BOARD OF PATENT                                     
                                            JEFFREY V. NASE               )                                                                             
                                            Administrative Patent Judge                           )   APPEALS AND                                       
                                                                                                  )                                                     
                                                                                                  )  INTERFERENCES                                      
                                                                                                  )                                                     
                                            MURRIEL E. CRAWFORD           )                                                                             
                                            Administrative Patent Judge                           )                                                     

                 ICC/sld                                                                                                                                





                          3In the answer (page 7), the examiner refers to so-called                                                                     
                 "well known" teachings which were never set forth in the                                                                               
                 statement of the rejection.  Prior art evidence that is relied                                                                         
                 upon must be positively set forth in the statement of a                                                                                
                 rejection.  See In re Hoch, 428 F.2d 1341, 1342, 166 USPQ 406,                                                                         
                 497 (CCPA 1970).                                                                                                                       
                                                                           7                                                                            





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