Appeal No. 2004-0779
Application No. 09/790,185 Page 3
Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Oshima ('299)3.
Claims 2-445 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Oshima (‘299), or in the alternative, as
being obvious over Oshima (‘299) in view of Satoh and Aoki.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima ('299) in view of Oshima ('511).
3 The examiner rejects claims 1 and 7 under 35 U.S.C. § 102(b) as being
anticipated by WO98/27533 (answer, page 3). In the subsequent sentence, the
examiner asserts that U.S. Patent 6,266,299 is equivalent to the WO document,
listed supra. In the rejection, the examiner goes on to rely upon the U.S.
Patent to support the rejection. As appellants do not dispute that the U.S.
Patent is equivalent to WO98/27553, we also rely upon U.S. Patent 6,266,299.
4 Although the examiner additionally lists claim 6 as being rejected
(answer, pages 3 and 4), as noted by appellants (reply brief, page 9), claim 6
has been canceled.
5 In the answer (pages 4 and 7), the examiner additionally relies upon
additional references to Satoh and Aoki to support the examiner's taking of
Official Notice. However, these references have not been included in the
statement of the rejection. If the examiner wants the references to be
considered, the reference should be listed in the statement of the rejection.
"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." In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). Here, although the
examiner cites Satoh and Aoki, (answer, pages 4 and 7), he fails to positively
include the references in the statement of the rejection. However, we consider
the failure to positively recite Satoh and Aoki to be an oversight by the
examiner, and will consider these references. See Ex parte Raske, 28 USPQ2d
1304, 1305 (Bd. Pat. App. & Int. 1993).
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