Appeal No. 1997-4129
Application 08/237,988
means for storing the capability information for
use by the master device during a communications
operation with the slave device.
The Examiner relies on the following prior art:
Hughes et al. (Hughes) 5,109,484 April 28, 1992
Peterson et al. (Peterson), Operating System Concepts
(2d ed. Addison-Wesley Publ. Co. 1985), pp. 412-13.2
Claims 1, 4, 7, and 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hughes and Peterson.3
We refer to the Examiner's Answer (Paper No. 18) (pages
referred to as "EA__") for a statement of the Examiner's
position and to the Reply Brief (Paper No. 19) (pages
Peterson was cited for the first time in the2
Examiner's Answer, but was not incorporated into the
rejection. The Examiner relies on Peterson for a teaching
that it was well known to associate a capability list with a
program (Examiner's Answer, pages 4-5). Since Appellants
address Peterson in their Reply Brief, we will treat Peterson
as part of the rejection. The Examiner should note that
references relied on in any way should be made part of the
rejection. See 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.").
See footnote 2.3
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