Appeal No. 2004-0403
Application 09/100,684
Obviousness
Initially, we note that the statement of the rejection must
contain a mention of all references applied in the rejection.
See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat.
App. & Int. 1993). Accord Ex parte Hiyamizu, 10 USPQ2d 1393,
1394 (Bd. Pat. App. & Int. 1988); In re Raske, 28 USPQ2d 1304,
1304-05 (Bd. Pat. App. & Int. 1993); MPEP § 706.02(j) (7th ed.,
rev. 1, Feb. 2000). The references relied on to support Official
Notice should have been made part of the statement of the
rejection after they were cited. Nevertheless, appellants had
notice of the references and discussed them. Therefore, we
consider the references cited to support the Official Notice
findings as if they were part of rejection.
Appellants argue that the examiner has not shown all
limitations of any claim to be disclosed or suggested by the
references. While appellants argue several limitations, it is
sufficient to focus on the following limitation of claim 1:
providing with the billing statement [sent from the first
entity to the individual] an offer to said individual to pay
at least a portion of an amount due on said billing
statement if said individual becomes a customer of said
second entity.
Claims 11-13 have a similar limitation. Claims 22 and 28-30 also
have a similar limitation, where, as noted in the new ground of
rejection under 35 U.S.C. § 112, second paragraph, claim 28
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