Appeal No. 2001-1218 Page 7
Application No. 08/727,798
the obviousness rejection, as well as the 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, upon
review by the Court of Appeals for the Federal Circuit, 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).
The examiner again contends that Cl-Z has been grouped with base-labile
protecting groups in appellants’ specification. Thus, the examiner argues that:
Guided by this disclosure and the well known fact in the art that
base labile protecting groups are all carbonyl containing groups,
hence, one having ordinary skill in the art would have recognized
that the Cl-Z used by Folkers to protect the Lys residue of the prior
art would have been grouped also, as base-labile protecting group
albeit, not expressly articulated by Folkers.
Examiner’s Answer, page 11. But for the same reasons articulated above with
respect to the rejection under 35 U.S.C. § 102(b), that argument fails, and the
rejection is reversed.
We note with respect to the rejection of claims 21 and 23-27 under
35 U.S.C. § 103(a) over the above combination as further combined with Webb,
that Webb does not remedy the deficiencies of Rivier and Folkers, and thus that
rejection is also reversed.
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