Appeal No. 1998-1245
Application No. 08/111,831
foreign priority and this foreign application is also referenced in the Horrobin abstract
relied on by the examiner. Thus, there would appear to be a reasonable indication that the
disclosure of the U.S. Patent corresponds to the abstract to Horrobin. It is not readily
apparent why the examiner, having a full text document equivalent to the document
abstracted by Chemical Abstracts, continued to relied on the abstract rather than the
complete document. However, be that as it may, the rejection before us relies only on the
abstracts and the subsequently cited Goodman and Gilman's. We note that the record
does not indicate that either the examiner or appellants have attempted to make available
for consideration the full text documents on which the abstracts to Kimura I and Kimura II
are based.
Under these circumstances we could remand this application to the examining
group for clarification as to the relevance of the U.S. Patent to Horrobin and for
consideration of the full text articles on which the abstracts are based. 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. However, in the interest of judicial economy and of
reaching a disposition on the record presented, we elect to consider the issues raised by
the rejections before us. In so doing, we note that we have limited our consideration of the
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