Appeal No. 2001-2687
Application No. 09/524,858
references in the Answer that are not applied in the instant rejections. Cf. 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.”).
Of those references, it appears that only one (U.S. Patent 4,763,188; Johnson)
describes structure consistent with a multi-chip module, a fact which may further
indicate that the rejections are based on an erroneous interpretation of the instant
claims.1
The examiner has not shown that Cunningham or Zamborelli, or any combination
thereof, discloses or suggests all the requirements of independent claims 36 and 40.
See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (in a
determination of unpatentability “the Board must point to some concrete evidence in the
record in support of...[the]...findings”). We thus do not sustain the Section 103
rejections of the claims.
1 We acknowledge that it may be proper to produce new evidence (e.g., a reference) in support of
a fact officially noticed, when the asserted fact has been traversed by an applicant. In that case, absent
entering new grounds of rejection, the reference could only be used for the limited purpose of showing the
fact alleged, rather than for any additional teachings it might provide. In any event, the critical feature that
the rejections allege to be taught by Cunningham was not contained in any of the instances of “Official
Notice” in the rejections.
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