Ex Parte Naito - Page 8




               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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