Appeal No. 2001-1162 Page 3
Application No. 08/726,803
This board serves as a board of review. 35 U.S.C. § 6(b) ("The [board] shall, on
written appeal of an applicant, review adverse decisions of examiners upon applications
for patents . . .."). In this case, the examiner's statement of the rejection which appears
on pages 3-9 of the Examiner's Answer is essentially unreviewable. In the paragraph
bridging pages 3-4 of the Examiner's Answer, the examiner first makes references to
the individual references applied and concludes "[t]he claimed invention differs primarily
in that it employs a sodium folinate solution. One of ordinary skill would have been
motivated to employ a sodium folinate solution in the prior art solution composition
since the prior art clearly suggests the same."
First, the examiner makes reference to the "claimed invention" instead of
discussing the requirement set forth in any individual claim pending in the application.
Patentability is determined on a claim-by-claim basis not by making a broad reference
to the "claimed invention." Second, the examiner only states what one of ordinary skill
in the art would presumably have been "motivated" to do, not what would have been
obvious to this hypothetical person. The statutory standard of patentability under 35
U.S.C. § 103 is obviousness, not motivation. Third, it is unclear what the examiner
means by his suggestion that one would have been motivated to employ a sodium
folinate solution in the "prior art solution composition." Simply put, what is the "prior art
solution composition" which the examiner seeks to modify by using sodium folinate?
The examiner cites to column 16, lines 65-70 of Haeger in support of this conclusion.
This portion of Haeger states that sodium folinate can be used in that invention. Thus,
it does not appear that it is necessary to substitute sodium folinate into an unknown
"prior art solution composition" since the prior art apparently describes the use of
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