Appeal No. 1997-3511
Application No. 08/233,663
For an appellate court to fulfill its role of judicial review it must have a clear
understanding of the grounds for the decision being reviewed, (citation
omitted) . . . [which requires that] [n]ecessary findings must be expressed
with sufficient particularity to enable . . . [the] court, without resort to
speculation, to understand the reasoning of the Board, and to determine
whether it applied the law correctly and whether the evidence supported the
underlying and ultimate fact-findings.
Like the court in Gechter, this Board requires a clear understanding of the grounds for the
decision being reviewed. In this case, we find it impossible to ascertain whether the
evidence, upon which the examiner relies, reasonably supports the underlying fact findings
for the rejection under 35 U.S.C. § 103.
The Board cannot examine, in the first instance, all applications which come before
it in an ex parte appeal under 35 U.S.C. § 134. As we have stated, it has been the
experience of the Board that full text documents are always more fact filled than abstracts
of these documents. Here, for example, the abstract of German Patent 4,001,451 merely
describes a stable injectable solution of factor VIII or IX suitable for human therapy which
contains a defined amount of a natural or synthetic disaccharide which may be sucrose
and at least one amino acid which may be lysine or glycine. The abstract, also, provides
that the solution may contain CaCl . When we review the translation of the underlying
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document we find that example 3 describes a concentrated solution of Factor IX which
includes sucrose, lysine and CaCl . Whether this supports or hurts the examiner's case, it
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