Ex parte VISHWAKARMA et al. - Page 5

               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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