Appeal No. 94-1707
Application 07/345,622
Despite ten references being relied upon and a six page statement of rejection, we
can not discern why any single claim pending in this application is considered by the
examiner to have been obvious under 35 U.S.C. § 103. The statement of the rejection
amounts to no more than the examiner’s conclusion that the ten references render the
claimed subject matter obvious. A more detailed, fact based explanation is needed.
Accordingly, we vacate the rejection.
REMAND
Upon return of the application, the examiner should reconsider his position
regarding the obviousness of the claimed invention. If that reconsideration results in the
examiner determining that the subject matter of any individual claim on appeal is
unpatentable under 35 U.S.C. § 103, the examiner should issue an appropriate Office
action stating that rejection. If a further rejection under 35 U.S.C. § 103 is made, we urge
the examiner to follow the model set forth in MPEP § 706.02(j). Adherence to this model
would result to a more coherent, understandable statement of the rejection.
In reconsidering the patentability of the claimed subject matter under 35 U.S.C.
§ 103, the examiner should base his analysis on full text, translated documents, not
abstracts. Obviousness determinations under 35 U.S.C. § 103 are fact specific. Limiting
one’s consideration of a document to an abstract when the more fact filled full text
document is readily available is improper. Thus, the examiner should consider the
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