Appeal No. 1998-3264
Application No. 08/345,371
as required by each of the independent claims on appeal. In
the absence of such a teaching or suggestion, it is apparent
that the Georges reference is evidentially inadequate to
establish a prima facie case of anticipation as well as
obviousness.2
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Terry J. Owens ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
2In the supplemental examiner’s answer mailed April 25,
1997 (Paper No. 14), the examiner has referred to prior art
other than the Georges reference in an apparent attempt to
further support his anticipation and obviousness conclusions.
Without question, this attempt by the examiner was wholly
inappropriate. Where a reference is relied on to support a
rejection, whether or not in a minor capacity, that reference
should be positively included in the statement of the
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970). In our assessment of the examiner’s
section 102 and section 103 rejections, we have not considered
the prior art referred to in the aforementioned supplemental
examiner’s answer because it has not been positively included
in the examiner’s statement of these rejections.
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