Appeal No. 1999-0485
Application 08/526,781
this evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d at 1472, 223 USPQ at,
788 the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1
(1966), focused on the procedural and evidentiary
processes in reaching a conclusion under section 103. As
adapted to ex parte procedure, Graham is interpreted as
continuing to place the “burden of proof on the Patent
Office which requires it to produce the factual basis for
its rejection of an application under sections 102 and
103." (Citing In re Warner, 379 F.2d 1011, 1016, 154
USPQ 173, 177 (CCPA 1967)).
On page 7 of the answer, Appellant refers to reference
Cocanougher, U.S. Patent No. 5,212,662. We note that this
reference was not relied upon in the rejection. Our reviewing
court has stated that where a reference is relied on to
support a rejection, whether or not in a minor capacity, there
would appear to be no excuse for not positively including the
reference in the statement of the rejection. In re Hoch, 428
F.2d 1341, 1342, 166 USPQ 406, 407 (CCPA 1970).
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