Appeal 2006-0993
Application 10/351,739
As a first matter, we remand the Application to the Examiner for
action with regard to the Information Disclosure Statement (IDS) mailed
August 9, 2006. This IDS was filed after docketing of the appeal and has
not yet been reviewed by the Examiner.
As a second matter, we remand the Application to the Examiner for
review of the statement made in the Answer at page 5 (Answer § (10), ¶ 1).
In this paragraph, the Examiner states that the Appellants’ arguments made
in the Brief with respect to the rejection under 35 U.S.C. § 103(a) over
Aydelott and Tung “have been fully considered and are persuasive. The
rejection of claims 1, 3 and 8 has been withdrawn.” This statement is
unclear in view of the fact that the only rejection of record in the Final
Office Action was a rejection of claims 1, 3, and 8 under 35 U.S.C. § 103(a)
over Aydelott in view of the Admitted Prior Art or Tung (Final Office
Action 2) and this rejection has been restated in the Answer verbatim
(Answer 3). Clarification is required.
As a third matter, we remand the Application to the Examiner to
properly cite US Patent 6,072,854 in the “Evidence Relied Upon” section of
the Answer and in the statement of rejection of claim 3 if the Examiner is to
rely upon this reference to reject claim 3. Presently, the Examiner discusses
this reference on page 4 of the Answer in relation to the rejection of claim 3,
but the reference is not listed as evidence relied upon nor is it recited in a
statement of 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).
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