Appeal No. 1997-3911
Application 08/368,758
Claims 14-20, 22, and 23 alternatively stand rejected
under § 103 for obviousness over Yamaguchi in view of Patrick.
The Answer (at 3-4) also lists D.P. Siewiorek et al.,
Computer Structures: Principles and Examples 581, 612-14
(1982) as part of the "prior art of record relied upon in the
rejection of claims under appeal." This reference was not
mentioned in the final rejection and is entitled to no
consideration because it is not mentioned in the statement of
either rejection. See Ex parte Movva, 31 USPQ2d 1027, 1028
n.1 (Bd. Pat. App. & Int. 1993):
The examiner has cited and relied upon four new
references in the Examiner's Answer but did not make
a new ground of rejection. As set forth in In re
Hoch, 57 CCPA 1292, 428 F.2d 1341, 166 USPQ 406
(1970), "[W]hen 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 rejection." The failure of the examiner to do so
here appears to be for the purpose of avoiding a new
ground of rejection. Since a new ground of rejection
was not made, appellants were not entitled as a
matter of right to respond to this new evidence of
obviousness by way of amendment and/or evidence.
Rather, appellants were limited to presenting
argument by way of a Reply Brief. The procedural
disadvantage in which appellants were placed by the
examiner's action is apparent. Accordingly, we have
not considered the four references in determining
the correctness of the rejection before us in this
appeal. If in further prosecution of this subject
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