Appeal No. 2001-0499 Page 6
Application No. 08/945,731
non-gel-like polymers are used in Itoh. We do not have such a finding from the
examiner.
As a final example of the difficulty of reviewing the examiner’s position, we point
to the claim requirement that the polymer contain a second, cationic monomer. The
examiner states at page 8 of Paper No. 10 that Itoh teaches the use of cationic
monomers at page 24, lines 11-21. However, that passage of Itoh is directed to
homopolymers and copolymers which contain carboxylic acid groups. It is not readily
seen how those polymers would be considered cationic. However, that is not to say
Itoh does not specifically address the issue. Itoh states at page 50 that a “more
selective holding and release” can occur if an ionic monomer, such as a cationic
monmer is is used in the polymer. If nucleic acids are anionic in nature, this latter
passage from Itoh may supply the requisite reason, suggestion, or motivation to use a
cationic, gel copolymer as otherwise described in Itoh to separate nucleic acids by
absorbing at a low temperature and releasing at a high temperature. Again, we do not
have such findings and conclusions from the examiner.
The Court of Appeals for the Federal Circuit reviews board decisions. 35 U.S.C.
§ 144. The court discussed their statutory duty of review in Gechter v. Davidson, 116
F.3d 1454, 43 USPQ2d 1030 (Fed. Cir. 1997). In considering the issue, the court
stated “the statute’s mandate to ‘review’ implies inherent power in this court to require
that the Board’s decision be capable of review.” Id., F.3d at 1457, 43 USPQ2d at 1033.
The court observed “Necessary findings must be expressed with sufficient particularity
to enable our 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
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