Appeal No. 2000-1675
Application No. 08/855,279
Publications 8-203032 and 4-19809, cited by Appellant in an
Information Disclosure Statement filed August 21, 1998, Paper No.
8, as evidence of the existence of differently shaped sensing
patterns in magnetoresistive sensing elements. To whatever
extent these references may be applicable to the instant claimed
invention, we will not consider them because they are not part of
the statement of the rejection and may not be properly relied
upon. “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
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See also Ex parte Raske,
28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993).
If the Examiner was of the opinion that these references had
sufficient bearing on the issues on appeal, the Examiner was
under a duty to properly formulate a rejection incorporating
these references. The Examiner should be aware of the
implications of discussing the relevance of prior art not relied
upon to reject a claim. In accordance with the principles
articulated in In re Portola Packaging, Inc., 110 F.3d 786, 790,
42 USPQ2d 1295, 1299 (Fed. Cir. 1997), the PTO will not order or
conduct a reexamination in any application in which the relevance
8
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