Appeal No. 1997-2368
Application 08/158,782
however, simply to engage in a hindsight reconstruction of the claimed invention using
applicants' specification as a template and selecting elements from references to fill the
gaps. In re Gorman,
933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). Thus, we find that the
examiner has not provided the factual evidence which would reasonably support a
rejection of the claims on appeal under 35 U.S.C. § 103.
Where, as here, the examiner fails to establish a prima facie case of obviousness,
the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore the rejection of claims 1, 3-6, 8-10, 19,
20, 24, 25, 39-44, and 46-48 under 35 U.S.C. § 103 is reversed.
Obviousness-type Double Patenting
Claims 1, 3-6, 8-10, 19, 20, 24, 25, 39-44, and 46-48 stand rejected under the
judicially created doctrine of obviousness-type double patenting over claims 1-29 of U.S.
Patent No. 5,332,567. In setting forth the reasoning in support of this rejection, the
examiner recognizes that the claims on appeal are directed to a therapeutic treatment
wherein a patient is injected with “an effective amount” of a therapeutic agent while the
claims of U.S. Patent No. 5,322,567 are directed to a diagnostic method wherein the
patient is injected with “an effective amount” of a diagnostic agent. (Answer, page 7).
Without further explanation, the examiner concludes the “the differences fail to provide any
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