Appeal No. 1999-1472 Page 4
Application No. 08/591,767
DISCUSSION
Initially, we invite attention to section (11) of the Examiner's Answer entitled
"Response to Argument." There, at page 6, line 2, the examiner cites "US patent
5,61,141 [sic], col. 13, lines 25-33." This is a reference to US Patent No. 5,661,141
issued August 26, 1997 to Petrow, made of record in the advisory action mailed June 8,
1998 (Paper No. 9). Conspicuously, the examiner does not rely on Petrow in the
statement of rejection under 35 U.S.C. § 103(a). As stated in 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 the rejection." Here,
the examiner does not rely on Petrow in setting forth the rejection under
35 U.S.C. § 103(a), and we shall not consider that reference further.
The claims on appeal call for a "testosterone analog" having the following
chemical structure:
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