Appeal No. 2001-1162 Page 5
Application No. 08/726,803
"consisting of" the recited components. One of the optional components encompassed
by claims 10 and 11 is a buffer known as tris. Tris is a synonym for tromethamine.2
Thus, the first issue to be resolved in considering Haeger as a primary reference is
whether claims 10 and 11 are open to the inclusion of 3-mercapto-1,2-propanediol as
an antioxidant.
In regard to "consisting of" claim 11, the examiner has not explained how this
closed claim is open to the inclusion of 3-mercapto-1,2-propanediol. Nor has the
examiner explained how a "consisting essentially of" claim such as claim 10 on appeal
is open to the inclusion of this compound. Absent a more specific explanation by the
examiner as to how either claim 10 or 11 should be read as to include the presence of
3-mercapto-1,2-propanediol, we do not find that the examiner has established a prima
facie case of obviousness on this basis. Thus, any rejection premised upon Haeger is
reversed.
Turning to Buchs, we find that the full text translation of this reference, if
anything, teaches away from the claimed invention. As seen from page 5 of the
translation, the goal of the Buchs invention "is to make a concentrated, stable solution
based upon folates available, which contains neither a stabilizing agent nor a
complexing agent." Buchs found that sodium folinate solutions according to that
invention were stable for at least 12 months at temperatures from 0°C to 5°C "without
the addition of stabilizing agents and/or complexing agents." Translation, page 5.
Since the examiner's statement of rejection is nonspecific as to how the teachings of
2 See the attached printout of information derived from the web site of the
Massachusetts General Hospital. The URL was accessed on March 7, 2003.
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