Appeal No. 1997-2338
Application No. 08/173,376
upon an abstract of a published article by Stoner et al. which names a pesticide and an
additional compound, i.e., citral, which reasonably appear to fall within the scope of the
combination used in the claimed invention. However, the information provided by both
abstracts is so limited as to preclude a reasonable consideration of both the examiner’s
position or that put forth by the appellant.
A patentability determination under 35 U.S.C. § 103 is fact specific. Almost by
definition the full text document which is abstracted is more fact rich than the abstract. It is
the experience of the board that review of the full text document when a rejection is
premised upon an abstract will most likely significantly strengthen or weaken the
examiner's position. Rarely does consideration of the full text document leave one in the
same position where one was after considering the abstract alone. Here the abstracts
offer little information beyond the mentioning of several ingredients and do not, on their
face, relate to the presently claimed method of controlling an ant species.
For these reasons, we do not reach the rejection under 35 U.S.C. § 103, but
remand to the examiner to ascertain whether the underlying articles of the abstracts
presently relied on, would reasonably support a conclusion that the claimed subject matter
is prima facie obvious within the meaning of 35 U.S.C. § 103.
Other Issues
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