Appeal No. 1997-3511
Application No. 08/233,663
We would, additionally, note that the appellants have described the issues raised by
this appeal as being whether the claimed compositions are non-obvious over the seven
references identified at page 3 of the Brief. The examiner notes at page 2 of the
Examiner’s Answer that only the five listed references are relied on. Since we find no
further discussion of the remaining two references, we assume this is the correct statement
of the rejection before us. However, it serves as further evidence of the confusion which
exists on this record.
Since the filing of the Examiner’s Answer, translations of both German 4,001,4514
5
and WO 91/10439 have become available. (Copies Attached). The issues raised by
rejections of obviousness are a fact-intensive inquiry, both as to what is claimed and what
the state of the art is relative to the claimed invention. It stands to reason that full text
documents, whether they be English language translations of foreign language documents
or the full text English documents, will provide more facts. It is not apparent why the
examiner and appellants have satisfied themselves with attempting to determine
patentability under 35 U.S.C. § 103 on less than a complete factual record.
As stated in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1033
(Fed. Cir. 1997):
4Provided to the USPTO by The Ralph McElroy Translation Co. in August of 2001.
5Provided to the USPTO by Schreiber Translations, Inc. in June 2001.
5
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