Appeal No. 95-4823
Application 07/856,012
references needed in order to arrive at the claimed subject matter constitutes error on the
part of the examiner.
Second, the examiner has not properly considered those claims which are limited
to specific gamma aminobutyric acid agonists [GABA] such as claim 14 on appeal. The
examiner has merely concluded that "it would have been obvious to a person skilled in the
art to substitute one GABA agonist for another." However, the examiner has not relied
upon any facts in support of this conclusion. Where does Kastner or Pino Capote
describe the use of any of the specific GABA agonists required by claim 14 on appeal?
Failure for the examiner to consider the subject matter as a whole in making a rejection
under 35 U.S.C. § 103 constitutes error.
3. Kastner.
As is clear from the citation of Kastner at page 3 of the Examiner’s Answer, the
examiner is relying upon an "Embase Abstract" of the document, not the document itself.
Appellants confirm at pages 8-9 of the Appeal Brief that the examination of the application
up to the filing the Appeal Brief had been premised upon the abstract of Kastner, not the
complete document. In the Appeal Brief, appellants made of record the original German
language reference and premised their argument on partial translations of the document. It
does not appear that appellants or the examiner have had the full text German language
document translated.
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