Appeal No. 1998-2107
Application No. 08/137,624
limitation “said substituted porphyrin being soluble in an aqueous solution” in the
inconsistent rejections.
We decline the invitation to engage in such a paper chase. Instead, we
vacate the examiner’s rejection of claims 1-7, 14-20, 22-24 and 26-29 under 35
U.S.C. § 102(b) over Vanderkooi, in addition to the examiner’s rejection of claims
1-7 and 14-20 under 35 U.S.C. § 103 over Vanderkooi in view of Lui, and remand
this application to the examiner. Upon return of the application, the examiner should
take a step back and reevaluate this record together with the relevant prior art. If, on
reflection, the examiner finds that a rejection is appropriate, the examiner should
issue an appropriate Office action setting forth such rejection, using the proper legal
standards and clearly setting for the facts relied upon in support of such a rejection.
We further note that, according to the examiner, “[c]laims 1-7; [sic] [and]14-
20 are rejected under 35 U.S.C. § 103 as being unpatentable over Vanderkooi …
as applied to claims 22-24 and 26-59 above, and further in view of Liu….” Aside
from including canceled claim 46 in the examiner’s reference to claims “26-59,”
there is no rejection of “claims 22-24 and 26-59” over Vanderkooi “above.” The only
other rejection on this record that mentions Vanderkooi is a rejection (Answer, page
4) of “claims 1-7, 10, 14-20, 22-24 and 26-29.” Again, the examiner incorrectly
included canceled claim 10 in that rejection.
Rejection #5:
According to the examiner (Answer, page 7) “[c]laims 30-37 are rejected
under 35 U.S.C. § 103 as being unpatentable over Kahl … in view of Ellis….” We
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