Appeal No. 95-4823
Application 07/856,012
Despite being presented with an Appeal Brief in which appellants rely upon partial
translations of the full text Kastner article, the examiner continued to rely upon the Embase
Abstract of Kastner. In fact, the examiner did not acknowledge in the Examiner’s Answer
appellants’ reliance upon the partial translation of the full text Kastner article.
By relying upon the partial translation of Kastner in pursuing their case on appeal,
appellants changed the factual setting in which the patentability determination under 35
U.S.C. § 103 takes place. The examiner’s failure to acknowledge and take into account
this shift in the factual base of the 103 analysis constitutes error.
4. WoldeMussie Declaration.
Appellants rely upon a declaration filed under 37 CFR § 1.132 by co-appellant Dr.
Elizabeth WoldeMussie, dated August 3, 1993. See pages 14-16 of the Appeal Brief.
The examiner did not acknowledge or discuss this declaration in the Examiner’s Answer.
As stated in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by experiment, prior art
references, or argument, the entire merits of the matter are to be reweighed.
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The failure of the examiner to consider the WoldeMussie declaration constitutes error.
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