Appeal No. 94-4495
Application 07/865,165
in a claim must be considered and given effect in judging the patentability of that claim against the
prior art. In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974); In re Wilder,
429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). Appellants’ claims are directed to the
preparation of a binary sensitizing dye comprising the step of reacting a solution of a dye containing
a carboxyl functional group and a dye containing an amino or a hydroxyalkyl functional group in the
presence of a combination of 2-halo-1-alkylpyridinum salt and a 4-dialkylaminopyridine compound
such that th e two dye compounds undergo a dehydrative condensation reaction. Claim 3, i n
particular, defines the binary dye compound by its chemical structure.
The prior art is not seen to disclose or suggest the claimed subject matter set forth in th e
claims on appeal. None of the references relied upon by the examiner teaches forming the binar y
sensitizing dye by subjecting two dyes as defined in the claims on appeal to dehydrative condensation
reaction conditions. While Mukaiyama and Bald disclose using a 2-halo-1-alkylpyridinium salt in a
dehydrative condensation reaction and Steglich, Scriven and the Fieser references teach that 4 -
dialkylaminopyridine is a superior acylation catalyst, none of the re ferences taken alone or collectively
would have suggested combining the 2-halo-1-alkyl-pyridinum salt and a 4-dialkylaminopyridine
compound in a reaction to for m a binary dye. The only suggestion for combining the pyridinum salt
and pyridine compound could only have come from appellants’ disclosure. The suggestion must be
found in the prior art, not in applicant's disclosure. In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). As for the binary dye compounds set forth in claim 3 and in
the claims dependent thereon, the examiner has not pointed to any disclosure in the prior art relied
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