Appeal No. 94-2477
Application 07/893,554
To further confuse the matter, the examiner cites the following two references at
page 2 of the Examiner’s Answer:
Chemical Abstracts 97(23):193048f, 1982 (Vaupel, D.B. et al.)
Biosis Abstract AN 78:167016, BA65:54016, 1976 (Noyes, R. Jr. et al.)
However, copies of these two abstracts as originally published are not of record.
Rather, it appears that the examiner is still relying upon the printout containing these
two abstracts as obtained from the computer database.
We first point out that the printout of record contains a copyright date of 1991.
Thus, it is not apparent that the printout is prior art to the claims on appeal. Rather, at
best, the examiner’s reliance upon the printout can be interpreted to be similar to the
Patent and Trademark Office’s (PTO) reliance upon information described in a
database printout as discussed in In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed.
Cir. 1994). As determined in Epstein, the PTO can rely upon information contained in a
printout of a database which is not itself prior art under appropriate circumstances. We
need not determine whether those circumstances are present in this case since we
have obtained the full text Vaupel and Noyes articles. It is not apparent why appellant
and the examiner have spent their resources determining the patentability of the subject
matter on appeal based upon abstracts of technical articles when the full text articles
are readily obtained. While the ultimate question of obviousness under 35 U.S.C. §
103 is one of law, that question can only be answered after certain factual findings have
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