Appeal No. 1999-0329
Application No. 08/212,818
We emphasize the examiner’s use of the word “or”, thereby transforming the
rejections from the application of prior art as a combination, to the application of
prior art in the alternative.
The record is silent with regard to why the rejections were transformed in
this manner. Therefore, it is unclear what “grounds of rejection” the examiner is
presenting for our review.
3. Additional evidence relied upon to support the rejections:
Notwithstanding the confusion, set forth supra, in responding to
appellants’ arguments the examiner relies on two references that are not part of
the underlying rejection. First, in response to appellants’ arguments regarding
the first ground of rejection, the examiner relies on “Zhu et al. 5,069,766, col. 1 to
col. 2, line 9.” See Examiner’s Answer, page 7. Then in response to appellants’
arguments regarding the second ground of rejection, the examiner relies on the
“teaching of Kobayashi….” See Examiner’s Answer, page 10. Note however,
that the second ground of rejection does not list the Kobayashi reference as
relied upon.
In this regard, we remind the examiner that “[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 statement of the
rejection.” In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970).
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