Appeal No. 2001-1162 Page 4
Application No. 08/726,803
sodium folinate.
Another difficultly in reviewing the examiner's statement of the rejection is that it
appears to contain the examiner's response to arguments which were made in
response to previous submissions by appellants apart from the present Reply Brief.
See pages 5-9 of the Examiner's Answer. It is unclear from the record why the
examiner would structure a statement of rejection in this manner. The statement of a
rejection should include the facts and reasons why the individual claims being reviewed
are unpatentable, not responses to arguments set forth in previous Office actions.
Our best guess as to the examiner's position is that each of Haeger, Buchs, and
Mueller would be considered a so-called primary reference to be modified on the basis
of the teachings in Remington's and Hagers. We believe the examiner's position is that
each of Haeger, Buchs, and Mueller describes a sodium folinate composition but not
the use of a stabilizer selected from the group consisting of sodium citrate, sodium
acetate, and mixtures thereof as required by the claims on appeal. The examiner
would then rely upon Remington's and Hagers to provide the teaching, suggestion, and
motivation to use such a stabilizer in the compositions of the so-called primary
references, thus making the subject matter of the claims as a whole obvious to one of
ordinary skill in the art. If this is in fact the examiner's position, we disagree that these
references establish a prima facie case of obviousness.
Turning to Haeger first, the sodium folinate compositions of that reference
must contain tromethamine as a buffer and 3-mercapto-1,2-propanediol as a
antioxidant. Claim 10 states that the claimed composition is one "consisting essentially
of" the recited components while claim 11 on appeal states that the composition is one
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