Appeal No. 2002-1682 Page 4
Application No. 09/023,696
inevitably possess the same characteristics recited in the appealed claims because the
prior art process for preparing microcapsules and applicants' process described in the
specification are essentially the same. We disagree. The examiner does not point to
any passage in Erbel, Sutton, Schutt, Grinstaff, or Klaveness disclosing a process for
preparing microcapsules by (1) providing a solution of a material in an aqueous solvent;
and (2) spraying said solution into a gas such that the aqueous solvent evaporates,
thereby forming hollow microcapsules, characterized in that the aqueous solution
contains a liquid of greater volatility than water. But that is the sine qua non of the
process for preparing hollow microcapsules described in applicants' specification. See,
e.g., the specification, page 1, line 24 through page 2, line 8. On this record, therefore,
the examiner has not established that the prior art microcapsules "appear to be
prepared by a process which is the same" as the process described in applicants'
specification for preparing the claimed ultrasound contrast agent comprising hollow
microcapsules. Where, as here, the premise of the examiner's rejection is not
supported by evidence in the record, the rejection cannot stand.1
The rejection of claims 21 through 27 under 35 U.S.C. § 102(b) or § 102(e) as
anticipated by the cited prior art is reversed.
Alternatively, the examiner argues that it would have been obvious to modify the
microcapsules of Erbel, Sutton, Schutt, Grinstaff, or Klaveness to function so that, when
1 The examiner's argument that prior art microcapsules "appear to be prepared
by a process which is the same" as the process for preparing hollow microcapsules
described in applicants' specification is inconsistent with the issuance of process claims
1 through 14 in U.S. Patent No. 5,741,478. See Paper No. 21, page 15, footnote 1.
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