Appeal No. 2000-1332
Application No. 08/793,242
(answer, page 3). The examiner goes on to explain that
[i]t is believed the openings for the tubes of
Yamaguchi are formed prior to the partition
insertion, since the tubes and conduits are
immediately inserted and fixed to the fluid box.
. . . Clearly, if Yamaguchi deemed a
criticality on forming the tube openings after
the partition insertion, further disclosure
would have been made [answer, page 6]. 1
The examiner's position here is unsound. To begin
with, and as pointed out by the appellant, Yamaguchi is
silent as to whether openings for heat exchange tubes 21
are formed in header pipes 130, 140 before or after the
end plugs 15-18 and partitions 71, 72, 75 are positioned
and immobilized. Furthermore, Yamaguchi neither states
nor implies that the heat exchange tubes are inserted and
1 On page 6 in the answer, the examiner relies on Sutou to
bolster the proposition that Yamaguchi’s tube openings are
formed prior to partition insertion. Sutou, however, has not
been included in the statement of the rejection of claims 2
through 5, 7, 10, 11 and 13. Where a reference is relied on
to support a rejection, whether or not in a minor capacity,
there is no excuse for not positively including the reference
in the statement of the rejection. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Accordingly, we have not considered the teachings of Sutou in
reviewing the rejections of claims 2 through 5, 7, 10, 11 and
13 .
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