Appeal No. 2001-0931 Page 6
Application No. 09/104,476
On this record, the examiner provides no analysis of the Wands factors.
In addition, we find that the examiner failed to rely on any factual evidence to
support his position. Instead, we find only the examiner’s unsupported
conclusions, tied together with the issue of written description, as to why the
specification does not enable the claimed invention. For example, we note the
examiner’s failure to develop the record with regard to his comments that “the
pore size may be a point of criticality” and “the function of the test strip is highly
dependent upon the pore size.” See id.
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1033 (Fed. Cir. 1997), “[f]or an appellate court to fulfill its role of judicial
review it must have a clear understanding of the grounds for the decision being
reviewed,” 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 of Appeals in Gechter, this board requires a clear
understanding of the grounds for the decision being reviewed. In this case, we
find it difficult to understand the examiner’s reasoning and whether the evidence
upon which he relies supports the underlying fact-findings for the rejection under
35 U.S.C. § 112, first paragraph.
In the absence of a fact-based statement of a rejection based upon the
relevant legal standards, the examiner has not sustained his initial burden of
establishing a prima facie case under 35 U.S.C. § 112, first paragraph.
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