Appeal No. 2004-0358 Page 5
Application No. 08/997,748
mechanical sector (e.g., for audio and video tapes). Furthermore, dextran
magnetite has been suggested as a relaxant agent for measuring the
exchange of water across erythrocyte membranes (Biochem. and
Biophys. Res. Comm. 97, 114 (1980), and is generically predicted to be a
radiopaque agent in USP 4,101,435. [Specification, page 1, line 11,
through page 2, line 2, emphasis added].
Considering the original specification in its entirety, however, including the above-
referenced passage, we disagree that the specification provides adequate, written
descriptive support for a method for imaging the blood stream now claimed.
Simply stated, it is not apparent from the “Abstract of the Disclosure,” the
“Summary of the Invention,” the “Detailed Discussion” of the invention, Examples 1
through 27, or the original claims that applicants were in possession of a method for
imaging the blood stream using “new magnetic materials useful in medical diagnoses.”
That fact is not changed by the mention of known complexes of magnetite with dextran
or human serum albumin in the Background section of the specification. Nor is that fact
changed because applicants describe stable colloidal solutions of those complexes in
water “which are put to a wide range of uses because of their magnetic properties.”
Those uses include, inter alia, “agents for measurements in the blood stream.”
Applicants’ position to the contrary, notwithstanding, the original specification does not
convey to any person skilled in the art that they were in possession of agents
possessing the characteristics required for use in angiography or of a method for
imaging the blood stream.
To the extent that applicants’ argument in the Appeal Brief and Reply Brief might
be construed to mean that a method for imaging the blood stream, recited in
independent claims 94 and 95, would have been obvious by piecing together various
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