Appeal No. 1998-2107
Application No. 08/137,624
There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants'
disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d
675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On this
record we agree with appellants (Reply Brief8, page 12) “the Examiner instantly has
discussed no references containing any suggestion or motivation to use applicant’s
[sic] claimed starting materials to obtain the novel water soluble oxygen-quenchable
porphyrin compounds recited in the instant claims.”
Finally, we note that the examiner makes two references to Graham v. John
Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) in his response (Answer, pages 9
and 10) to the appellants’ arguments. However, in applying a per se rule of
obviousness the examiner ignored the principles set forth in Graham v. John Deere
Co. We remind the examiner as set forth in the Manual of Patent
8 Paper No. 22, received November 19, 1997.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007