Appeal No. 2001-1705 Page 5
Application No. 08/616,141
not met her burden on this record. Accordingly, we reverse the rejection of claim
31 under 35 U.S.C. § 112, first paragraph.
THE REJECTION UNDER 35 U.S.C. § 102:
The following quote represents the examiner’s entire statement of
rejection under 35 U.S.C. § 102(b). “Claims 1, 2, 5, 6, 19, 20, 23, and 30 stand
rejected under 35 U.S.C. [§] 102(b) as being anticipated by Cannon.” Answer,
page 5. In responding to appellants’ arguments (Answer, page 8), the examiner
finds:
[t]he instant claims are drawn to compositions comprising a
compound having a net negative charge ionically bound to a
macrocycle (porphyrin) having a net positive charge and to
methods of delivering compounds having a net negative charge to
cells comprising mixing the compound with a macrocycle having a
net positive charge, wherein the macrocycle ionically binds to the
compound.
Conspicuous in its absence in this statement, and the statement of the
rejection, is any explanation as to why the amounts in Cannon would be effective
to enhance delivery of the compound to cells that bind the macrocycle, as is
required by the claimed invention. While the examiner argues (Answer, page 9),
“[t]he method of Cannon has the same active steps as the claimed method i.e.
the mixing together of a negatively charged compound (lipid) with a positively
charged macrocycle … and the delivery of the mixture to cells” the examiner fails
to explain where Cannon teaches an amount that is effective to enhance delivery
of the compound to cells as is required by the claimed invention.
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear
in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson,
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