Upon consideration of Appellants' Brief on Appeal (Paper
31), the Examiner's Answer (Paper 32), Appellants' Reply Brief
(Paper 33), the Supplemental Examiner's Answer (Paper 34), and
the Appellants' Supplemental Reply Brief (Paper 35), we
reverse
the rejection of claims 6 to 11, 16, 18, and 19 as being
unpatentable under 35 U.S.C. § 103 in view of Souquet, Morgan,
Doepfner, Bauer, and Camisa. With all due respect to the
Examiner's position, we seriously doubt that one skilled in
the art would have been motivated to modify the subcutaneous
treatment described by Souquet and make it into a topical
treatment without the benefit of knowledge found only in
Appellants' disclosure. On this record, it is Appellants who
first disclose the concept that melanomas express somatostatin
receptors . The prior art relied upon by the Examiner does2
not teach or suggest the concept. It is improper to rely on
Appellants' disclosure as motivation for combining the prior
art. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983) ("To imbue one of
ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record
convey or suggest that knowledge, is to fall victim to the
See Appellants' Specification at Page 1.2
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