Ex parte GOLDENBERG - Page 8

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

          prior art references each enhances only the image of tumorous               
          tissues.  The examiner’s finding that the method of claim 1 is              
          inherently performed by the applied prior art is, therefore,                
          clearly erroneous.                                                          
          In summary, for the reasons just discussed there is                         
          clearly a difference between the invention of claim 1 and the               
          methods taught by the applied prior art.  The examiner’s reliance           
          on an inherency position fails to address why this difference               
          would have been obvious to one having ordinary skill in the art.            
          As noted above, an explanation of why differences between the               
          claimed invention and the applied prior art would have been                 
          obvious is a necessary part of the examiner’s burden of                     
          establishing a prima facie case of obviousness.  Thus, the                  
          examiner’s failure to properly address the noted difference                 
          between the prior art and the invention of claim 1 results in a             
          failure to make a prima facie case of obviousness.                          
          For all the above reasons, we do not sustain the                            
          examiner’s rejection of claim 1 and of claims 3, 4, 6 and 7 which           
          are grouped therewith.  Since claims 2 and 5 include all the                
          limitations of claim 1 based on their dependency therefrom, we              
          also do not sustain the rejection of these claims.  Accordingly,            
          the decision of the examiner rejecting claims 1-7 under 35 U.S.C.           


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