Appeal No. 1999-0832 Page 8
Application No. 08/147,793
of the illumination source being a laser (claim 2) and a arc 1
discharge source (claim 3). We find that Kino does not
overcome the basic deficiencies of Suzuki. Accordingly, the
rejection of dependent claims 2, 3, and 5 under 35 U.S.C. §
103 is reversed.
Turning next to the rejection of independent claim 6
under 35 U.S.C. § 103 as unpatentable over Suzuki , the 2
examiner's position (answer, page 8) is that since Suzuki
discloses all of the structural elements of the claim, that it
would have been obvious to use Suzuki "to achieve a method of
darkfield illumination system as claimed." We find that claim
6 recites,
1 Although the examiner relies upon Kino for a teaching of using a laser
as the illumination source, we note that this feature is in fact taught by
Suzuki (col. 5, lines 34-37).
2 The statement of the rejection of claim 6 recites that the claim is
rejected over Suzuki. However, at the conclusion of the rejection, the
examiner makes an additional statement that it would have been obvious to use
the structure of Kino to obtain the claimed method "because the structure of
Kino et al. (4,927,254) would inherently increase the intensity of
illumination, reduce the intensity level." This rejection has been repeated
since the non-final Office action (Paper No. 12, mailed September 11, 1996),
and appellant has not commented on this point. "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 rejection." 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, the Kino reference will not be considered as
to the patentability of claim 6 since the reference was not included in the
statement of the rejection.
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