Ex parte DAHLIN et al. - Page 3




           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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