Appeal No. 1996-0657
Application 07/919,784
plant endochitinases have been clearly shown to have anti-fungal activity and utility
as fungal biocontrol agents.” Suslow is not included in the listing of “prior art of
record relied upon in the rejection of claims under appeal” in Section (7) of the
Examiner’s Answer; nor in the listing of “references which have been newly cited in
this Examiner’s Answer” in Section (8) of the Examiner’s Answer; nor is Suslow
included in the statement of rejection set forth in Section (9) of the Examiner’s
Answer.
At this juncture, we think it appropriate to remind the examiner that
references relied on to support a rejection under 35 U.S.C. § 103 should be
included in the statement of rejection. As stated in 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.
Where, as here, the examiner lists ten references “relied upon in the rejection of
claims under appeal” and includes those references, and only those references, in
the statement of rejection under 35 U.S.C. § 103, we have limited our review of the
prima facie case of obviousness to those references. We shall not discuss the
other references, referred to in the Examiner’s Answer, further.
The Issue
The issue presented for review is whether the examiner erred in rejecting
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