Appeal No. 2005-0743
Application No. 09/351,723
to see the reference urged by the examiner that was not identified as part
of the Official Notices assertions. This was revealed in the Advisory Office
action mailed on April 17, 2003 as Paper No. 22 as a part of the discussion
at page 2.
This file history makes it clear to us that the examiner has not utilized
the Kanevsky reference in the formal statement of the rejection of the
claims on appeal within 35 U.S.C. § 103 in the final rejection. It is the final
rejection from which appellants appeal and not the Advisory Office action.
The Kanevsky et al. reference mentioned in the arguments, but not recited
in the statement of a rejection, will not be considered. “Where a reference
is relied on to support a rejection, whether or not in a minor capacity, that
reference should be positively included in the statement of the rejection.”
MPEP § 706.02(j) (quoting In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
406, 407 n.3 (CCPA 1970). Accord Ex parte Movva, 31 USPQ2d 1027, 1028
n.1 (Bd. Pat. App. & Int. 1993) ; Ex parte Raske, 28 USPQ2d 1304, 1304-
05 (Bd. Pat. App. & Int. 1993) ; Ex parte Hiyamizu, 10 USPQ2d 1393, 1394
(Bd. Pat. App. & Int. 1988).
From our perspective, the examiner is free to reinstitute any desired
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