Appeal No. 2005-0999
Application No. 09/939,356
examiner acknowledges appellants’ concerns in the physical
incorporation of Pei et al. in the devices of Takahashi or
Pavlovic” (page 6 of answer, third paragraph), the examiner cites
five additional patents to support the conclusion of obviousness.
However, since the additional citation of Griffis, Gottbreht,
Ngo, Horton and Jordon is an improper incorporation of evidence
by the examiner, they will not considered here in determining the
propriety of the examiner’s rejection. It is axiomatic that
prior art evidence relied upon by the examiner must be cited in
the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). Should the examiner
consider claims 9 and 10 to be unpatentable under 35 USC § 103
over the collective teachings of the cited prior art, prosecution
should be reopened upon return of this application to the
examiner.
In conclusion, based on the foregoing,. the examiner’s
rejections of claims 1 and 3-8 are affirmed, and the rejection of
claims 9 and 10 is reversed. The examiner's decision rejecting
the appealed claims is affirmed-in-part.
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