Appeal No. 2001-0758 Page 5
Application No. 08/919,477
DTPA).” Answer, pages 8 and 9. It is not clear what the basis for the examiner’s
assertion is, and the actual statement of the rejection (Answer, pages 4-7) says nothing
about the broad linker limitation,3 focusing instead on the limitations of narrower claims
19 and 20. The last word on this issue is appellants’ blanket assertion in the Reply
Brief (page 3), that “Barbet does not teach or suggest a [linker] group for covalent
attachment to an antibody.”
The findings of fact underlying an obviousness rejection, as well as conclusions
of law, must be made in accordance with the Administrative Procedure Act, 5 U.S.C.
706 (A),(E) (1994). See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821,
50 USPQ2d 1930, 1934 (1999). Findings of fact underlying the obviousness rejection
must be supported by substantial evidence within the record. See In re Gartside, 203
F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000). In addition, in order for
meaningful appellate review to occur, the examiner must present a full and reasoned
explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d
1430, 1432 (Fed. Cir. 2002). We would further emphasize what should be self-evident:
the examiner must present a full and reasoned explanation of the rejection in the
statement of the rejection, specifically identifying underlying facts and any supporting
evidence, in order for appellants to have a fair and meaningful opportunity to respond.
Clearly, the examiner’s rejection does not meet this standard, but we are reluctant to
simply reverse the examiner’s decision on this basis alone.
In our view, the examiner’s belated assertion that “[t]he linker limitation is met by
[Barbet’s N-alpha] DTPA” (Answer, page 9), “which can act as a linking group” (Answer,
3 We note that the examiner uses the phrase “peptide linker” in the statement of the rejection, but
in every case, the phrase refers to the peptidyl portion of Barbet’s aminopolycarboxylate-appended
peptide, not to any “linker group” within the meaning of the claims at issue.
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