Appeal No. 95-0371
Application 07/965,304
223, 169 USPQ 267, 369 (CCPA 1971). The statement of the rejection amounts to only a
recitation of unsupported conclusions on the part of the examiner. The examiner’s
consideration of this issue does not appear to take into account either the prior art or the
relevant legal standards. Again, the examiner’s rejection is not susceptible to a meaningful
review.
The rejection of claims 1, 4 and 5 is reversed.
3. Prior Art Rejections
Both prior art rejections are premised upon a Chemical Abstracts citation of
Priebe. To the extent the full text article may not have been readily available to the
examiner at the time the first action was mailed on January 14, 1993, it was available as of
April 14, 1993, since appellants cited the full text Priebe article and supplied a copy
thereof in the Information Disclosure Statement filed on that date (Paper No. 3).
Why the examiner would continue to rely upon an abstract when the more fact filled full text
article is presented to him is not understood. Prior art rejections are fact specific. Where
as here, the examiner relies upon an abstract of a full text article and the full text article is
supplied to the examiner, we will not spend the scarce resources of this board in
determining whether the abstract provides a sufficient basis for concluding that a claimed
invention is anticipated under 35 U.S.C. § 102 or rendered obvious under 35 U.S.C. §
103. Those determinations must be made on the basis of the full text article.
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