Appeal No. 1998-2107
Application No. 08/137,624
Rejection #4:
According to the examiner (Answer, page 6):
The instant invention is drawn to a reaction of halogen
(as in COCl) with [an] OH group. This is a text book reaction.
Morrision and Boyd describes [sic] a reaction of acid chloride
and alcohol. The difference is that the instant invention is
drawn to porphyrin and glycol derivatives. However, it would
have been obvious for one skilled in the art to apply the
reaction as taught by the prior art, to porphyrin and PEG
derivatives and obtain results similar to the instant invention,
because of the similarity of the reacting group.
The claimed process is entirely analogous to and
therefore obvious over [the] process in [the] prior art, since the
same functional groups react under routine conditions to give a
predictable product. It is also obvious that one skilled in the art
recognized thionyl chloride and oxalyl chloride are well-known
reagents to prepare acid chlorides.
In response appellants argue (Brief, page 18) that:
The Examiner, however, has based his opinion on erroneous
and incorrect law. In particular, the Examiner’s per se
standards that “novel reactants will not alone render the
process unobvious” and that “[t]he question of patentability for
a process claim is whether the reaction itself is novel and
unobvious” are clearly incorrect. On this issue, the Board’s
attention is respectfully directed to In re Ochiai, 71 F.3d 1565,
37 USPQ2d 1127 (Fed. Cir. 1995).
The examiner responds (Answer, pages 9-10) to appellants’ argument as
follows:
In re Ochiai [sic] did not overturn any prior case law,
certainly not In re Albertson, [sic] 141 USPQ 730. The
decision merely says: do not cite case law to me, argue the
chemistry. Note how close the prior art is to what is being
claimed here, in the manner of Graham vs. John Deere Co.,
[sic] (USSC 1966), 383 US1 [sic]; 148 USPQ 459 which was
done here.
6 We note that, in contrast to the examiner’s statement of the rejection, we find no
rejection of claims 22-24 and 26-59 over Vanderkooi “above.”
5
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