Appeal No. 1998-0889
Application 08/006,585
OPINION
References not in the statement of rejection are not considered
In the response to the arguments in the Final Rejection, the
Examiner cites the following references as evidence of the facts
Officially Noticed:
Oka et al. 3,897,964 August 5, 1975
Henderson 4,398,202 August 9, 1983
Mitsuyama 5,080,223 January 14, 1992
Hindagolla et al. 5,108,503 April 28, 1992
Venambre et al. 5,283,423 February 1, 1994
Sneed 5,521,002 May 28, 1996
Toda (Japanese abstract) 05-318985 March 4, 1994
The Examiner also refers to Yoshikawa, but we find no record of the
patent number in the file.
Since the references are not applied in the statement of the
rejection they will not be 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."). Introducing references through the "backdoor" to avoid
creating a new ground of rejection or to bolster a rejection that is
deficient is improper. Where references are cited in response to an
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