Appeal No. 2005-0126
Application No. 09/967,791
comes to the board with a unique record. On this record, we are constrained to find that
the examiner has not provided sufficient evidence to support a prima facie case of lack
of obviousness.
The dissent would appear to acknowledge the deficiencies of the record before
us, noting that, to the extent that further explanation of the strengths of the prior art (and
any de novo review by the board to establish a prima facie case of obviousness)
“diverges from the examiner's reasons, that the support for the examiner's position,
could, at the very least, have been denominated as a new ground of rejection.”
We respectfully disagree. First, this board serves statutorily as a board of
review, not a de novo examination tribunal. This administrative scheme necessarily
preserves an appellant's right to cross-examine any arguments and prior art cited by the
examiner and limit the appeal record in a manner appropriate for appellate review.
While the majority acknowledges the board has regulatory authority to enter a new
ground of rejection when warranted, we do not agree with the dissent that this is an
appropriate case for the exercise of such authority.
What is clear from the record is that the blood-brain barrier exists and is due to a
unique capillary structure in the brain. According to the specification and the prior art,
the existence of the blood-brain barrier effectively prevents substances such as
hormones, proteins, certain ions, and drugs from entering the brain without facilitated
transport or lipid mediated transport. Keep acknowledges that, to some extent, what
crosses the blood brain barrier is also dependent upon the nature of the compound.
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