Appeal No. 1999-2681
Application No. 08/656,998
simulation process. Since the examiner has not established a motivation for the
combination of the teachings, and the examiner has admitted that Hyduke alone is lacking
and does not suggest the stopping of the simulation as a result of the comparison, the
examiner has not established a prima facie case of obviousness. Therefore, we cannot
sustain the rejection of claims 1-7 under 35 U.S.C. § 103.
The examiner also mentions a Patent to Smith 4,644,487, but the examiner has not
applied this teaching in the rejection. As set forth in In re Hoch, 428 F.2d 1341, 1342 n.
3, 166 USPQ 406, 407 n. 3 (CCPA 1970), "[w]here 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." The examiner's action
in citing Smith is therefore inappropriate. Accordingly, we have not considered it in our
evaluation.
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