Appeal No. 95-1798
Application 07/397,415
pages 7 through 9. In response, the examiner states the
following:
Appellants argue that one skilled in the art would
have no motivation to combine the water-insoluble
polymers of DeBoer with the iodobenzamido-glucopyranose
of Bertoni, in order to obtain water-soluble iodinated
polymers. However, this argument is not persuasive
since both of the references of DeBoer and Bertoni set
forth saccharide units comprising a closely analogous
iodinated aromatic group attached to a glucose monomer
unit. Also, both of the DeBoer and Bertoni References
disclose using these compounds as agents for contrast
media. It appears that a person having skill in the
art would be motivated to combine the DeBoer and
Bertoni References having these facts at hand.
See the Examiner’s Answer, page 9, last paragraph. Manifestly,
that response does not come to grips with the argument set forth
in appellants’ main Brief.
In column 3, lines 42 through 46, DeBoer discloses that the
backbone chain of the disclosed iodinated polymers can represent
a naturally occurring polymer, for example, a
polysaccharide containing repeating glucose units such
as starch, glycogen, cellulose, cellulosic derivatives,
and equivalent naturally occurring polymers.
The examiner has determined that the above-quoted description in
DeBoer encompasses dextran. However, to the extent that a person
having ordinary skill would have envisioned dextran as the
backbone chain in DeBoer’s polymers, such hypothetical person
would have understood that the polymers must be water-insoluble
and substantially non-water-swellable. This is the sine qua non
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