Appeal No. 1998-2808
Application No. 08/733,464
screw art (id.).
To support his position that the screw thread profile set
forth in claim 7 is well known in the art of bone screws, the
examiner, on page 5 of the answer, relies on U.S. Patent No.
4,569,338 to Edwards. Edwards, however, is not included in
the statement of the rejection and was used for the first time
in the answer to support the examiner’s position. Such a
procedure by the examiner is totally improper and
inappropriate since Edwards does not form a part of the
examiner's final rejection of the appealed claims. If a
reference is relied upon in any capacity to support a
rejection, the reference should be positively included in the
statement of the rejection. See Manual of Patent Examining
Procedure (MPEP) § 706.02(j) (7th ed., Jul. 1998), In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
See also Ex parte Raske, 28 USPQ2d 1304, 1305 (Bd. Pat. App. &
Int. 1993). Accordingly, we have not considered the Edwards
patent or the examiner's comments with respect thereto in
reaching our decision on this appeal.3
3We note that while Edwards does mention that the threads have a “wide
surface of contact” (col. 4, line 54), the “wide surface” appears to be a
6
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