Appeal No. 1998-0091
Application No. 08/404,054
circuiting was known to be a problem, that alleged admission
should be identified in the statement of the rejection. Cf.
MPEP § 706.02(j) (7th ed., July 1998, rev. 1, Feb. 2000)
("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)."). Accord Ex parte Movva, 31 USPQ2d 1027, 1028 n.1
(Bd. Pat. App. & Int. 1993); Ex parte Raske, 28 USPQ2d 1304,
1304-05 (Bd. Pat. App. & Int. 1993); Ex parte Hiyamizu,
10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988). 6
For the foregoing reasons, the rejection of claims
3 and 5 for obviousness over Bell in view of Hegner is
reversed.
We note in passing that appellants have not challenged the
examiner's contention that it would have been obvious, when
6We note that neither the specification nor the
brief asserts that appellants were the first to recognize the
causes of the short-circuit problem. Cf. In re Sponnoble, 405
F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969)(discovery of the
source of the problem is part of the inquiry under § 103).
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