Appeal No. 1999-1629
Application 08/510,491
conclude that the Examiner has failed to establish a prima
facie case of obviousness. The rejection of claims 4-6, 8,
and 10 is reversed.
Gatten not considered
The Examiner cites Gatten, U.S. Patent 4,989,016, for the
first time during prosecution in the examiner's answer (EA6).
Appellant argues that the Examiner's reliance on Gatten,
which is not even of record in the case, is inappropriate
(RBr4).
We agree with Appellant. Gatten is not properly before
us and will not be considered. The rejection must contain a
mention of all references applied in the rejection. See
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd.
Pat. App. & Int. 1993). Accord Ex parte Hiyamizu,
10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988); In re Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993); MPEP
§ 706.02(j) (7th ed., rev. 1, Feb. 2000). If Gatten was
considered, it would improperly create a new ground of
rejection, which was not permitted at the time the examiner's
answer was entered. See 37 CFR § 1.193(a)(2)(1998).
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