Ex parte GOLDENBERG - Page 6

          Appeal No. 95-0206                                                          
          Application 07/866,789                                                      

          We note that neither of these latter features is                            
          specifically recited in claim 1.  Even though the examiner                  
          applied the three references against all the claims on appeal,              
          the examiner did not identify any specific recitation of claim 1            
          which was not disclosed by Goldenberg ‘647.  The Hansen and                 
          Goldenberg ‘544 references appear to have been cited only to meet           
          the limitations                                                             

          of certain dependent claims as indicated above.  Thus, the                  
          rejection of claim 1, as written, suggests that Goldenberg ‘647             
          fully meets the invention, which of course, would support a                 
          rejection on obviousness as well.                                           
          Appellant’s main argument throughout has been that claim                    
          1 is directed to the enhanced imaging of cells or tissues which             
          may have no pathology associated therewith whereas the applied              
          prior art is all directed to the enhanced imaging of tumorous               
          cells and tissues.  Appellant argues that the types of “healthy”            
          tissues recited in claim 1 cannot be imaged by the methods                  
          described in the applied prior art.  The examiner has taken the             
          position that the imaging carried out by the applied prior art              
          inherently involves observing normal as well as abnormal cells              


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