Appeal No. 1995-3021
Application 07/949,347
The examiner's consideration of the evidence in this matter constitutes legal error.
The rejection over The Merck Index is reversed.
3. Chemical Abstracts
In short, the rejection based upon the Chemical Abstracts citation suffers from the same
defect as the rejection based upon The Merck Index. While the Chemical Abstracts citation
does state that the combined use of acetaminophen and codeine resulted in an analgesic affect
which was 1.8-6.6 times greater than when each drug was given alone, the point remains that
the Chemical Abstracts citation does not describe the amount of active agents used. Without
knowing the amounts of acetaminophen and codeine used in that study, it is not apparent how
the examiner can properly assert that the claimed invention would have been obvious from a
consideration of that reference.
The rejection over Chemical Abstracts is reversed.
OTHER ISSUES
As explained, the examiner and appellant confined their consideration of Chemical
Abstracts citation to the abstract. Neither the examiner nor appellant appear to have obtained
and evaluated the full text document. It is not apparent why the examiner and appellant would
spend their resources debating the patentability of claims in a factual vacuum of an abstract
when the full text document is readily available.
Be that as it may, we have obtained a copy of the full text document. Upon return of the
application, the examiner should carefully consider the document and determine whether it
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