Appeal No. 1997-1208
Application 08/077,219
rejection of independent claims 1, 6, 11, and 16, nor of
claims 2, 4, 5, 7, 9, 10, 12, 14, 15, 17, 19, and 20 dependent
thereon.
As a final commentary, we take note of the Examiner’s
citation of the U.S. patents to Stein and Serlet. The
Examiner’s motivation for the citation of these references for
the first time in the Answer is not completely clear from the
record. In any case, these references form no basis for any
rejection in this case and we decline to review their merits
with respect to the issue of patentability of the claims on
appeal. If the Examiner was of the opinion that these
references had sufficient bearing on the issues on appeal, the
Examiner was under a duty to properly formulate a rejection
incorporating these references. The Examiner should be aware
of the implications of discussing the relevance of prior art
not relied upon to reject a claim. In accordance with the
principles articulated in In re Portola Packaging Inc., 110
F.3d 786, 42 USPQ2d 1295, 1299 (Fed. Cir. 1997), the PTO will
not order or conduct a reexamination in any application in
which the relevance of prior art not relied upon
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