Appeal No. 2001-2584 Page 11
Application No. 08/462,817
appropriate Office Action setting forth such a rejection, using the proper legal
standards and clearly setting for the facts relied upon in support of such a
rejection. Furthermore, any such Action that relies on Green should clearly
articulate why evidence set forth in appellants’ declaration is not sufficient to
antedate the Green reference. We emphasize that any further communication
from the examiner that contains a rejection of the claims should provide
appellants with a full and fair opportunity to respond.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 8), the claimed invention differs
from Green only with regard to the choice of host cell employed, Green teaches
the use of “HeLa cells whereas the instant claim[s] is [sic] limited to CV-7 cells.”
To make up for this deficiency in Green the examiner finds (id.), “[t]he use of CV-
7 cells … was old and well known in the art at the time that the instant invention
was made.” The examiner, however, provides no evidentiary support for this
position.
In reviewing the Board’s findings and conclusions on appeal, the Federal
Circuit has stated that “[f]or judicial review to be meaningfully achieved within
these strictures4, the agency tribunal must present a full and reasoned
explanation of its decision. The agency tribunal must set forth its findings and the
4 “5 U.S.C. §706(2) The reviewing court shall—
(2) hold unlawful and set aside agency actions, findings, and conclusions found
to be—
(A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance
with law;
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