Appeal No. 2001-1574
Application No. 08/856,050
facilitate proper head loading and prevent the head carriage from contacting the front
surface of the slide bar.
Appellants argue (Brief at 5) that the “unnumbered recess” shown in Figures 27
and 28 of Akiyama is not formed in a slide bar, but in the cassette case. Appellants
further argue (id. at 6-7) that the prior art lacked suggestion to make a combination
such as that proposed.
The examiner responds (Answer at 5) that even if Akiyama may be regarded as
failing to disclose a recess in a slide bar, the reference shows a recess in “the structure
most external to the cartridge” at least in Figures 4, 27, and 28. “One of ordinary skill
would have realized that a recess in the slide bar would have increased the stroke of a
head carriage.” (Id.)
The examiner also refers, on page 7 of the Answer, to another patent to an entity
of “Akiyama et al” and a publication of “Kato,” which are alleged to support an ancillary
position with regard to “miniaturization” being a design goal in the art. However, the two
alleged references have not been properly submitted as evidence to show
unpatentability, are not before us, and have not been reviewed by us. The patent and
publication noted by the examiner are thus, in effect, irrelevant with respect to whether
or not the instant rejection is proper.1
1 We note that, should references be relied upon in a response to an appellants’ arguments, the
references should be clearly included in the initial statement of the rejection. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) (“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.”).
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