Appeal No. 96-0352
Application 08/031,563
We also reverse the examiner’s alternative rejection of appealed claim 1 on the grounds of
obviousness-type double patenting. The examiner contends that methemoglobin reductase enzyme is
often added to hemoglobin to maintain its structural and functional stability , and “because of prior art
knowledge that establishes the importance of methemoglobin reductase activity in the amounts claimed,"
modifications and variations of the product defined by patented claim 1 of the Sehgal patent would have
been obvious to one of ordinary skill in the art. See the answer at page 12.
We have reviewed the five references of record which are “presented to merely make of
record prior art knowledge and what the skilled worker already knows” (answer, page 12), but we2
find no explicit disclosure of the “importance of methemoglobin reductase activity” in the range claimed
here. In this regard, we point out that Scheinberg teaches that chemical reductants which function
analogously to the enzyme “need not be stoichiometrically equivalent to or greater than the quantity of
oxygen” (emphasis added) to which a hemoglobin product used to absorb carbon monoxide would be
exposed during processing or use. See this reference at column 3, line 66 to column 4, line 41. Thus,
we agree with appellants that no reference of record suggests that a polymerized hemoglobin product
as defined by the patented claim should be prepared to have the “specific enzyme activity”, i.e., “from
about 1.0 to about 2.0 units of enzyme activity”. Thus, the rejection for obviousness-type double
2Consistent with the practice suggested in In re Hoch, 428 F.2d 1341, 1342, n.1, 166 USPQ
406, 407, n. 1, (CCPA 1970), these references should have been included in the examiner’s statement
of rejection. In light of the prosecution history and our disposition of this appeal, we will not exercise
our discretion to remand this application to the examiner to modify the statement of rejection.
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