Appeal No. 95-1364
Application No. 07/919,287
by the abstracts. The examiner has also not explained how the abstracts expressly describe a compound
which binds to a fusion protein required by claim 30. No evidence showing or reasoning explaining how
the claimed subject matter is inherently described by the abstracts has been provided. We recognize that
the Bogdanova abstract refers to aryl and alkyl analogs of p-benzoquinone and hydroquinone halides. We
find this teaching ambiguous and the examiner has not provided an explanation of how the aryl or alkyl
analogs meet the claim limitations. Thus, neither Bogdanova and Grinev describe an embodiment within
the scope of the claimed subject matter.
While we are in effect reversing the examiner’s rejection under § 102(b) based on the Grinev and
Bogdanova abstracts, we note that the Russian language publications which were abstracted appear to be
highly pertinent to the claimed subject matter. These publications are not of record in the application. The
examiner has not indicated that the references are not available in the PTO or that attempts to obtain the
articles through inter-library loan were unsuccessful. We therefore, vacate the rejection and remand the
application to the jurisdiction of the examiner for further prosecution and consideration of the Bogdanova
and Grinev articles.
The rejection of claims 1-6, 8-9, 12-17 and 23-26 under 35 U.S.C. § 103
The examiner has rejected these claims under 35 U.S.C. 103 as unpatentable over the combination
of Leach et al., Grinev, Bogdanova, Thiel, Korsakova, Lyubchanskaya, Ordzhonikidze and Lavie. We
vacate and remand this rejection also.
The examiner’s answer relies on and discusses a Leach et al. reference. Examiner’s Answer, p.
8. This reference, however, is not of record in the application, A copy of the reference is not present in
the application file. Nor is it listed on the PTO Forms 852 and 1449 of record. Thus, we are unable to
evaluate the teachings of the reference. In addition, the rejection relies on the meager descriptions of
abstracts of foreign language publications. These publications appear highly relevant to the claimed subject
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