Appeal No. 1998-2107
Application No. 08/137,624
quenchable phosphorescent compounds to study oxygen in tissue…. The
differences [sic] is, [the] prior art does not teach soluble porphyrins covalently bound
to hydrophilic substituents” [emphasis added]. While we note that claims 1-7 and
14-20 do not expressly require hydrophilic substituents, these claims do require a
substituted porphyrin … being soluble in an aqueous solution.
We emphasize that the Vanderkooi reference is relied upon in both the
rejection under 35 U.S.C. § 102(b) and the rejection under 35 U.S.C. § 103.
However, the examiner’s statement of these rejections places the former in conflict
with the latter. By rejecting claims 1-7 and 14-20 under both grounds of rejection,
and identifying a difference between Vanderkooi and the claimed invention, the
examiner has created confusion with respect to his interpretation of the reference
and the claimed invention. Stated differently, if there is a difference between
Vanderkooi and the claimed invention, how can Vanderkooi anticipate the claimed
invention? The possibility exists that the rejections are based on differences in the
interpretation of the claim’s scope, however, we find no suggestion on this record
that the examiner’s rejections are based on differences in claim construction.
We further note that, in responding to appellants’ arguments the examiner
invites our attention to “previous actions” arguing (Answer, page 9) “[t]hat the dye
molecules are porphyrins (se [sic] previous actions) is obvious to one skilled in the
art.” However, the examiner fails to identify any particular “previous action,” but
instead suggests that the Board engage in a paper chase through the
administrative file to ascertain how the examiner would account for the claim
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