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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