Appeal No. 1997-2801
Application 08/364,072
drug is being employed to prevent the tumor from coming back.” Answer, page 4, lines 4-
8. However, we find no disclosure in Johnson which supports this statement. To establish
a prima facie case of obviousness, all the claim limitations must be taught or suggested by
the prior art. In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 582 (CCPA 1974). Here,
the examiner has not properly considered the subject matter as whole in reaching his
holding of obviousness.
The rejection under 35 U.S.C. § 103 is reversed.
Double Patenting
The PTO records available to us indicate that application 08/104,964 is now
abandoned. Accordingly this rejection is moot. In the event of further prosecution, the
examiner should determine whether that application has been refiled. If so, the examiner
should review the claims pending in such an application and determine whether double
patenting issues exist.
The provisional rejection under 35 U.S.C. § 101 is moot.
New Ground of Rejection Under 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b) we enter the following new grounds of
rejection.
(1) Claims 1 through 8 are rejected under 35 U.S.C. § 102(b). In support of this
rejection we rely upon Rasmusson and Stedman.
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