Appeal No. 2001-0624 Page 2
Application No. 08/204052
I. Improper New Ground of Rejection:
According to the examiner (Answer, page 2, ¶ 9), “[t]here is no prior art of
record relied upon in the rejection of claims under appeal.” Notwithstanding this
statement, the examiner relies on two references, Lannfelt2 and Mullins3, to
support her rejection of claims 109 and 119-134 under 35 U.S.C. § 112, first
paragraph. Our review of the record indicates that the examiner relied on both
Lannfelt and Mullins in the Office Action, mailed August 14, 1997 (Paper No. 25),
however, the examiner withdrew her reliance on Mullins in the subsequent Final
Office Action, mailed May 11, 1998 (Paper No. 28). Cf. Paperless Accounting,
Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231 USPQ 649, 651
(Fed. Cir. 1986), cert. denied, 480 U.S. 933 (1987) (“Every point in the prior
action of an examiner which is still applicable must be repeated or referred to, to
prevent the implied waiver of the requirement.”).
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”). Therefore,
in our opinion, the examiner’s renewed reliance on Mullins, in the Answer,
2 Lannfelt et al. (Lannfelt), “Alzheimer’s disease: molecular genetics and
transgenic animal models,” Behav. Brain Res., Vol. 57, pp 207-213 (1993).
3 Mullins et al. (Mullins), “Transgenesis in Nonmurine Species,” Hypertension,
Vol. 22, No. 4, pp 630-33 (1993).
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