Appeal No. 2004-2210 Page 6
Application No. 09/374,117
U.S.C. § 102 rejection is not a reversal on the merits of the rejection, but rather a procedural
reversal predicated upon the indefiniteness of the claimed subject matter.
The above being said, we add the following comments to facilitate any further
prosecution on the issues of the 35 U.S.C. § 102 rejection.
First, we note that the Examiner discusses a reference, Antoon, Jr. in the body of the
rejection, but does not list this reference in the statement of the rejection.3 At the very least,
discussing a reference in the body of the rejection without affirmatively listing it in the statement
of rejection leads to confusion as to the true grounds of the rejection. Such a circumstance also
greatly increases the chance that an applicant will overlook the unlisted reference and
misunderstand the true evidentiary basis for the rejection. For these reasons, every reference
discussed in the rejection must be listed in the statement of the rejection to give the applicant
appropriate notice of the evidence relied upon in the rejection. 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 the reference in the statement of rejection.).
We are cognizant of the fact that the rejection is a § 102 rejection. The use of supporting
evidence is permissible in an anticipation rejection in some circumstances. One such
circumstance is when the anticipatory reference is silent about a characteristic, but another
3Antoon, Jr. was discussed in the First Office Action (Paper No. 19, ¶¶ 3-4) as well as in the Answer. The
discussion from the First Office Action was incorporated by reference into the Final Rejection. At no time did the
Examiner list Antoon, Jr. in the statement of the rejection.
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