Ex parte Vinogradov

• Decision Date: 30 March 2001
• Docket Number: 624,Appeal 1998-2107,Application 08/137
• Parties: Ex parte SERGEI VINOGRADOV and DAVID F. WILSON
• Court: Patent Trial and Appeal Board

Ex parte SERGEI VINOGRADOV and DAVID F. WILSON

Appeal No. 1998-2107

Application No. 08/137, 624

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 30, 2001

The opinion is not binding precedent of the Board.

ON BRIEF^[1]

Before WINTERS, SCHEINER, and ADAMS, Administrative Patent Judges.

DECISION ON APPEAL

ADAMS Administrative Patent Judge.

This is a decision on the appeal under 35 U.S.C. § 134 from the examiner's final rejection. According to appellants "[c]laims 1-7, 14-20, 22-24, 26-45, 47-58 and 59 are pending in this [a]pplication." Brief^[2], § 3, page 2. Claims 8-13, 21, 25, 46 and 60 were canceled. According to appellants "[i]n a Final office Action dated May 9 1996, claims 1-7, 10 (sic), 14-20, 22-58 and 59 were rejected." Id . After two requests for reconsideration after Final Rejection, the status of the claims remained the same, according to appellants "all of the pending claims 1-7, 14-20, 22-24, 26- 45, 47-58 and 59 were rejected." The examiner confirms that "appellant's [sic] statement of the status of amendments after final rejection contained in the brief is correct."

However upon review of the Answer^[3] we find no statement of a rejection that refers to claims 38-45, 47-57 and 59. Therefore the rejection of claims 38-45, 47-57 and 59 has been withdrawn, as a matter of standard procedure. Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231 U.S.P.Q 649, 651-652 (Fed. Cir. 1986), cert. denied, 480 U.S. 933 (1987). Accordingly, while we find no statement on this record by the examiner acknowledging this issue, claims 38-45, 47-57 and 59 are free from rejection. In addition, the "INDEX OF CLAIMS" inside the front flap of the File Wrapper fails to reflect that claims 38-45, 47-57 and 59 are free from rejection. Instead, the last entry made in this index was on October 1995, presumably corresponding to the Non-Final Rejection (Paper No. 8) mailed November 6, 1995. As a result, this index fails to correctly identify the status of any claim on appeal.

We further note the examiner's statement (Answer, § 8, page 3) that "[t]he copy of the appealed claims contained in the Appendix to the brief is correct." However, upon review of these claims we note that appealed claim 49 is incorrectly recited, and appealed claim 50 is not recited in appellants' Appendix of claims. As a result, claim 51, as recited in appellants' appendix of claims, is improperly dependent on claim 49.

Taken as a whole, we begin our deliberations with something less than a full and complete briefing by the examiner and appellants.

Claims 1, 30 and 59 are illustrative of the subject matter on appeal and are reproduced below:

1. A compound for the measurement of oxygen in living tissue comprising a substituted porphyrin which is capable of absorbing an amount of energy and subsequently releasing said energy as phosphorescent light, said substituted porphyrin having an absorption band at a wavelength in the near infra-red region in living tissue and said phosphorescence being quenched by molecular oxygen, said substituted porphyrin being soluble in an aqueous solution.

30. A method for preparing a compound of the formula

Porph-X-Y-[-CH₂-CH₂-O]_n-H (II)

wherein Porph is a porphyrin selected from the group consisting of dihydroporphyrin and metalloporphyrin, X is a chemical bond or a linking group selected from the group consisting of -CO- and -NHCH2CO-, Y is a chemical bond or -O-, and n is an integer from about 8 to about 500, comprising:

(a) providing a compound of the formula

Porph-X-Y-Z (III)

where Z is hydrogen, halo or hydroxy; and

(b) reacting the compound of formula III with PEG at a temperature and for a time to provide a PEG-substituted porphyrin.

59. The compound of claim 1 wherein said substituent is a flexible, hydrophilic polymeric compound.

The references relied upon by the examiner are:

Vanderkooi et al. (Vanderkooi)

4, 947, 850

Aug. 14, 1990

Liu et al. (Liu)

5, 238, 940

Aug. 24, 1993

Ellis, Jr. et al. (Ellis)

5, 280, 115

Jan. 18, 1994

Kahl et al. (Kahl)

5, 284, 831

Feb. 8, 1994

Robert Thornton Morrison & Robert Neilson Boyd (Morrison), Organic Chemistry 864-865^[4] (5th ed., Allyn and Bacon, Inc. 1987) (1959)

GROUNDS OF REJECTION

1. Claims 1-7, 14-20, 22-24 and 58 stand rejected under 35 U.S.C. § 112, first paragraph. According to the examiner, "[t]he terms 'Flexible', [sic] 'hydrophilic', [sic] [and] 'polymeric' in claim 59 leave too much conception to the reader."

2. Claims^[5] 1-7, 14-20, 22-24, and 26-29 stand rejected under 35 U.S.C. §102(b) over Vanderkooi.

3. Claims 1-7 and 14-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Vanderkooi as applied to claims 22-24 and 26-59 above^[6], and further in view of Liu.

4. Claims 30-37 stand rejected under 35 U.S.C. § 103 as being unpatentable over Morrison.

5. Claims 30-37 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kahl in view of Ellis.

We reverse the examiner's rejection of claims 30-37 under 35 U.S.C. § 103 as being unpatentable over Morrison. For reasons which follow, the remaining rejections set forth by the examiner, identified, supra, as rejections 1-3 and 5 are not in condition for a decision on appeal. Therefore, we vacate rejections 1-3 and 5, and remand the application to the examiner to consider the following issues and to take appropriate action.

DISCUSSION

Rejection #4:

According to the examiner (Answer, page 6):

The instant invention is drawn to a reaction of halogen (as in COCl) with [an] OH group. This is a text book reaction. Morrision and Boyd describes [sic] a reaction of acid chloride and alcohol. The difference is that the instant invention is drawn to porphyrin and glycol derivatives. However, it would have been obvious for one skilled in the art to apply the reaction as taught by the prior art, to porphyrin and PEG derivatives and obtain results similar to the instant invention, because of the similarity of the reacting group.

The claimed process is entirely analogous to and therefore obvious over [the] process in [the] prior art, since the same functional groups react under routine conditions to give a predictable product. It is also obvious that one skilled in the art recognized thionyl chloride and oxalyl chloride are well-known reagents to prepare acid chlorides.

In response appellants argue (Brief, page 18) that:

The Examiner, however, has based his opinion on erroneous and incorrect law. In particular, the Examiner's per se standards that "novel reactants will not alone render the process unobvious" and that "[t]he question of patentability for a process claim is whether the reaction itself is novel and unobvious" are clearly incorrect. On this issue, the Board's attention is respectfully directed to In re Ochiai, 71 F.3d 1565 37 U.S.P.Q.2d 1127 (Fed. Cir. 1995).

The examiner responds (Answer, pages 9-10) to appellants' argument as follows:

In re Ochiai [sic] did not overturn any prior case law, certainly not In re Albertson, [sic] 141 U.S.P.Q. 730. The decision merely says: do not cite case law to me, argue the chemistry. Note how close the prior art is to what is being claimed here, in the manner of Graham vs. John Deere Co., [sic] (USSC 1966), 383 US1 [sic]; 148 U.S.P.Q. 459 which was done here.

In Ochiai [sic], the assignee had a patent to the starting materials and to the final product, and were asking for the process of making the final products, that is not the situation here; Chemistry is a teaching of analogous reactions, see Cram & Hammond, 2nd Edition pp. 565-67 (1964). Whether one of ordinary skill in the art would expect the process to proceed as suggested by the prior art is the suggestion provided by the art in the manner of Graham vs. John Deere [sic], above cited.

For a number of reasons we reverse this rejection of claims 30-37. First, the Cram & Hammond reference is not included in a statement of rejection, either in the Final Action^[7] or in the Answer. Where a reference is relied on to support a rejection, whether or not in a "minor capacity," there would appear to be no excuse for not positively including the reference in the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 U.S.P.Q. 406, 407 n.3 (CCPA 1970). Where, as here, the Cram & Hammond reference is not positively included in the statement of rejection under 35 U.S.C. § 103 before us, we shall not consider that reference further. Furthermore we are unable to locate a copy of this reference in the administrative file, or any indication that appellants received a copy of this reference.

Second, we are unable to identify the portion of In re Ochiai, 71 F.3d 1565, 37 U.S.P.Q.2d 1127 (Fed. Cir. 1995) that according to the examiner (Answer, page 9) "merely says: do not cite case law to me, argue the chemistry." In addition, we find no legal precedent to support the examiner's per se conclusion on this record that "[t]he claimed process is entirely analogous to and [is] therefore obvious over [a prior art] process…." Instead, our appellate reviewing court has made it clear that there are no per se rules of obviousness or nonobviousness. In re Ochiai, 71 F.3d at 1572, 37 U.S.P.Q.2d at 1133 (Fed. Cir. 1995)("reliance on per se rules of obviousness is legally incorrect.") Accord In re Brouwer, 77 F.3d 422, 425, 37 U.S.P.Q.2d 1663, 1666 (Fed. Cir. 1996).

Since there are no per se rules of obviousness or nonobviousness, each case must be decided upon the facts in evidence in that case. See In re Cofer, 354 F.2d 664, 667, 148 U.S.P.Q. 268, 271 (CCPA 1966)("[n]ecessarily it is facts appearing in the record, rather than prior decisions in and of themselves which must support the legal conclusion of obviousness under 35 U.S.C. §...