Appeal No. 2001-0499 Page 7
Application No. 08/945,731
supported the underlying and ultimate fact findings.” Id. What the Federal Circuit
rightfully expects from the Board, the Board expects from the examiner.
Under these circumstances, it is appropriate to vacate the rejection and return
the case to the jurisdiction of the examiner to reconsider the patentability of the claims.
REMAND
Upon return of the application the examiner should take a step back and
reassess the patentability of the claims. The reassessment should take place on a
claim-by-claim basis beginning with claim 3. If the examiner believes that claim 3 is
unpatentable on the basis of Itoh and/or other relevant prior art, he should state the
facts and reasons used in support with particularity.
There is other evidence of record which may be relevant in putting Itoh in proper
factual context to the extent it describes the separation of nucleic material. We refer to
European Patent Application No. 0 501 301 A2, Mori, of record. Mori describes an
electrophoretic gel comprising at least one cross-linked temperature-responsive
polymeric compound having an LCST used to separate nucleic acids. As described by
Mori, the acrylamide based gels of that reference are used to absorb nucleic acids at
low temperatures and release the absorbed material at high temperatures. See, e.g.,
column 6, lines 31-54. This information may provide evidence that Itoh’s disclosure that
gel polymers absorb at a low temperature and release at a high temperature does apply
to nucleic acids and thus provides an answer to appellants’ argument that Itoh is to be
read restrictively as only teaching absorbing nucleic acids at high temperature and
releasing at low temperatures.
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