Appeal No. 2001-0499 Page 3
Application No. 08/945,731
November 10, 1999. Therein, the examiner explains why the claims pending at that
time were considered to be unpatentable under 35 U.S.C. § 103(a) on the basis of Itoh,
Hoffman, Kausch, and Kawaguchi. The explanation is unusual in that it is a blend of a
statement of a rejection and an answer to arguments. Be that as it may, the explanation
is difficult to review since the examiner does not refer to any individual claim on appeal
but, rather, couches the explanation in terms of “the claims” or “the instant invention.”
As a result, we have a very general statement as to what purportedly would have been
obvious to one of ordinary skill in the art but not a specific statement as to why claim 3,
the broadest claim pending, would have been obvious to one of ordinary skill in the art.
While the examiner does point to specific disclosures of the four documents in
the explanation, at crucial points in the examiner’s analysis we are left with surmise and
conjecture. For example, the examiner states in the paragraph bridging pages 4-5 of
Paper No. 10:
A further reading of Itoh et al. at page 47, lines 6-24 reveals a teaching of
the general mechanism of action of the polymer. Stating that high molecular
weight substances are retained at low temperatures and released at high
temperatures. While Itoh et al. did not contemplate nucleic acids to be treated in
this manner, it is clear that an understanding of the general mechanism of action
of the polymer is sufficient to teach one of skill in the art how to use the polymer.
Another example appears at page 5 of Paper No. 10 where the examiner states that
“the general teachings of Itoh … are sufficient to teach one of skill in the art how to use
the polymer ….”
The vagueness and lack of specificity of the examiner’s position is perhaps
pointed up most succinctly in the paragraph bridging pages 6-7 of Paper No. 10 which
reads as follows:
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