Appeal No. 2001-1705 Page 7
Application No. 08/616,141
art to be useful for the same purpose, in order to form a third composition to be
used for the very same purpose.”
In addition, the examiner finds (id.) “it would be expected that ionic
bonding would enhance the stability of both the compound and the porphyrin in
vivo, as is suggested in Cannon….” For the following reasons we are unable to
agree with the examiner’s position. As set forth in In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970), “[w]here a reference is relied
on to support a rejection, whether or not in a ‘minor capacity,’ there would appear
to be no excuse for not positively including the reference in the statement of the
rejection”, accordingly the examiner’s reliance on Cannon is inappropriate, and
we do not include the teachings of Cannon as part of our deliberations on this
issue. Furthermore, it appears that the examiner’s position is that ionic bonding
would inherently enhance the stability of both the compound and the porphyrin.
Inherency, however, is immaterial if, as here, one or ordinary skill in the art would
not appreciate or recognize that inherent result. In re Shetty, 566 F.2d 81,
86, 195 USPQ 753, 756 (CCPA 1977).
Stated differently, none of the references relied upon by the examiner
recognize that ionic bonding would enhance the stability of both the porphyrin
and the oligonucleotides. In addition, the combination of references also fails to
suggest an amount of macrocycle effective to enhance delivery of the
oligonucleotides to cells binding the macrocycle. See e.g., Brief, pages 12-13.
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