Appeal No. 2002-0932
Application No. 09/510,533
and NiP plating processes “behave similarly” and provide “similar
results” (Answer, page 7). However, this reference was not
listed in the “Prior Art of Record” (Answer, page 2, ¶(9)) and
was not recited in the statement of the rejection (Answer, page
3). Furthermore, this reference has not been addressed by
appellants (see the entire Brief) and only first discussed in the
Answer in the examiner’s “Response to Argument” (Answer, ¶(11)).
Therefore we do not consider this reference as part of the
examiner’s evidence of obviousness. 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 that reference in the statement of the
rejection.”); Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat.
App. & Int. 1993).
We additionally note that Katz teaches that a Teflon liner
may be used for the plating bath vessel to keep the vessel from
being coated with nickel during the plating process (col. 5, ll.
10-21). However, the examiner has not presented any convincing
evidence or reasoning why one of ordinary skill in this art would
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