Appeal No. 1998-2107
Application No. 08/137,624
an attempt to determine what the examiner’s position is, we will vacate the rejection
and return the application to the examiner for further consideration.
If prosecution is continued, we recommend that the examiner review Enzo
Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999).
Therein, the court provided a model analysis of enablement issues and illustrated
the type of fact finding which is needed before one is in a proper position to
determine whether a given claim is enabled or non-enabled.
Rejections #2 and #3:
According to the examiner (Answer, page 4) “claims 1-7, 1012, 14-20, 22-24
and 26-29 are rejected over Vanderkooi … under 35 U.S.C. [§] 102(b)….” As set
forth in RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir 1984) “[a]nticipation is established only when a single
prior art reference discloses, expressly or under principles of inherency, each and
every element of a claimed invention” [citation omitted]. We note the examiner’s
argument (Answer, bridging paragraph, pages 4-5) in
support of the rejection under 35 U.S.C. § 102(b) that “Porphyrins (compositions)
are phosphorescent … [and] can be derivatized to esters…. Therefore, the instant
esters which are soluble and covalent are clearly anticipated by the prior art.”
However, in explaining rejection #3, a rejection of claims 1-7 and 14-20 under 35
U.S.C. § 103 over Vanderkooi in view of Lui, the examiner expressly states
(Answer, page 5) that Vanderkooi teach that “porphyrings [sic] serve as oxygen
12 We note that canceled claim 10 is incorrectly recited in this ground of rejection.
13
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