Appeal No. 2000-0600 Page 6
Application No. 08/642,268
that the specification makes reference to a number of disorders, including, “(but …
not limited to) thromboses,[ ]osteolytic disorders, kidney failure [and] antitumor
agents.” However, the examiner finds (Answer, pages 5-6) that the “nature of
testing relied on in the specification does not appear to be art-recognized for
treating all such disorders.” In this regard, the examiner makes reference (Answer,
page 6) to two prior art references – Muller and Smith. However, as set forth on
page 3 of the Answer, “[n]o prior art is relied upon by the examiner in the rejection of
the claims under appeal.” 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”).
Accordingly, the examiner’s reliance on Muller and Smith is in error.
Notwithstanding the examiner’s error, appellants responded to the
examiner’s argument (Reply Brief, page 4), therefore, we will consider the
references to the extent that the examiner and appellants have relied on them. For
emphasis, the following quote reproduces in full the examiner’s position relative to
the cited references (Answer, page 6), “[a]t best,[ ]Muller, provided in an earlier
action, suggests a correlation exists for the treatment of thrombosis-see second [to
the] last paragraph on p.[ ]113. Note also Smith cited in the specification,[ ]p.[ ]4, for
an example of a ligand binding assay that can be used does not make such
assertions. See page 12270.”
While we find the examiner’s point less than clear, we find appellants’
response compelling. According to appellants’ (Reply Brief, page 4):
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