Appeal No. 1998-0629 Application 08/234,525 generating for said sequence of characters a set of normalized attribute values using said set of attribute values and said attribute value standard; and recognizing said sequence of characters using said set of normalized attribute values. The Examiner relies on the following prior art: Wilber et al. (Wilber) 4,897,880 January 30, 1990 Claims 16 and 37 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Wilber. Claims 1-15, 17-36, and 38-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilber.2 We refer to the first Official Action (Paper No. 2), the second Official Action (Paper No. 5), the Final Rejection In the second Official Action (Paper No. 5), the2 Examiner changed the basis for the rejection of certain claims from § 102(b) to § 103 over Wilber. The Examiner also referred to Kelly et al., U.S. Patent 5,060,290, and Bruce et al., U.S. Patent 5,396,566, as evidence of obviousness (Paper No. 5, p. 4). However, Kelly and Bruce have not been made part of the rejection and are not considered. 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."). Accord Manual of Patent Examining Procedure (MPEP) § 706.02(j) (7th ed., Rev. 1, Feb. 2000); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993); Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993); Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988). - 3 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007