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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