Appeal No. 2000-0827
Application 08/466,104
least that is required for a description of the invention under
the first paragraph of § 112."), the examiner argues that "[a]s
in Winkhaus, the pairing of the specific gas with a specific
shell material might be seen in hindsight to be possible.
However, there is no indication that these particular
combinations were originally considered to be a part of
Applicant's invention." Answer at 4.
In response to the rejection, Appellant relies on two
declarations by a technical expert, Dr. Pamela Hilpert: (a) the
July 31, 1998, "Second Declaration of Pamela Hilpert, M.D.,
Ph.D." (hereinafter the "Second Hilpert Declaration"); and
(b) the March 24, 1999, "Third Declaration of Pamela Hilpert,
M.D., Ph.D." (hereinafter the "Third Hilpert Declaration"). Both
of these declarations discuss "Contrast Agents in Diagnostic
Ultrasound," which was authored by Dr. Hilpert and forms
Chapter 3 (hereinafter the "Hilpert Chapter") at pages 30-42 of
Volume 1 of Diagnostic Ultrasound (1991).
Beginning with the matter of how to construe the rejected
claims, we do not understand the examiner's above-quoted
assertion that "the instant claims are drawn to a composition
wherein each gas is combined with a specific sub-genus of shell
material . . . [of] human protein" (Answer at 4)(emphasis added)
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