Appeal No. 1998-2017
Application No. 08/802,216
on page 5 of the Final Rejection -- U.S. Patent 5,566,032 (Cleveland). The examiner
agreed in the Answer (page 2) that there was an “alternative 35 U.S.C.
§ 103(a) rejection over Cleveland...in view of Moss,” as stated by appellants on page 5 of
the Brief. Indeed, the examiner listed Cleveland as a reference “relied upon” on page 2 of
the Answer.
However, the statement of the rejection in both the Final Rejection and the Answer
does not include Cleveland. All references used in a rejection should be clearly included in
the initial statement 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 rejection.”). Moreover, it appears that the teachings of
Cleveland form no part of the rejection on appeal, not even in some “minor” capacity. We
thus do not view Cleveland as a reference in the rejection applied against the claims, and
have not considered the reference in reaching our determinations in the instant appeal.
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