Ex parte KUSLICH et al. - Page 6




          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   
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