Ex parte GOLDENBERG - Page 7

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

          and that such operation would meet the recitations of claim 1.              
          Appellant argues that inherency is not an appropriate ground for            
          finding obviousness under 35 U.S.C.  103.                                  
          Although appellant’s argument on inherency is flawed, the                   
          examiner’s finding of inherency is without factual support in the           
          prior art of record.  Claim 1 recites that a subject is injected            
          with “an antibody or antibody fragment which specifically binds a           
          marker produced by or associated with said cell or tissue.”  The            
          antecedent basis for said cell or tissue is the recitation of               
          “hypoplastic, anatomically displaced or ectopic cells or tissues”           
          as recited in lines 1-2 of claim 1.  Thus, the marker of the                
          invention of claim 1 must be associated with a cell or tissue               
          which is simply abnormally shaped, and not necessarily                      
          pathologically abnormal.  On the contrary, each of the applied              
          prior art references injects antibodies which bind to markers               
          produced by                                                                 
          tumorous cells or tissues and would not bind to markers of cells            
          which are simply abnormally shaped.  Thus, not only is the method           
          of claim 1 not inherently performed by the prior art references,            
          but the prior art is specifically designed not to enhance the               
          image of otherwise healthy tissues.  In other words, the image of           
          claim 1 enhances the appearance of healthy tissues while the                


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Last modified: November 3, 2007