Appeal No. 2005-0126
Application No. 09/967,791
claimed sugar composition, through a method of administration other than enteral or
intravascular, i.e. through the oral or other mucosa.
The examiner cannot rely on lack of criticality or experimental design as a basis
for rejection of a positive claim limitation. Patent examiners, in relying on what they
assert to be general knowledge to negate patentability on the ground of obviousness,
must articulate that knowledge and place it of record, since examiners are presumed to
act from the viewpoint of a person of ordinary skill in the art in finding relevant facts,
assessing the significance of prior art, and making the ultimate determination of the
obviousness issue. Failure to do so is not consistent with either effective administrative
procedure or effective judicial review. Examiners cannot rely on conclusory statements
when dealing with particular combinations of prior art and specific claims, but must set
forth the rationale on which they rely. See In re Lee, 277 F.3d 1338, 1343-1344, 61
USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). Thus, it is improper to rely on the “common
knowledge and common sense” of a person of ordinary skill in art to find an invention
obvious over a combination of prior art references, since the factual question of
motivation to select and combine references is material to patentability, and cannot be
resolved on subjective belief and unknown authority. In re Lee, 277 F.3d 1338, 1343-
1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002).
As with every case before the board, this board functions as a board of review,
not a de novo examination tribunal. 35 U.S.C. § 6(b) ("The [board] shall . . . review
adverse decisions of examiners upon applications for patents . . .."). Each appeal
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