Ex parte CASEY et al. - Page 3




          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).                                            
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