Appeal No. 1996-3866
Application 08/087,957
According to the examiner, Minor teaches “the combination of AZT (zidovudine) and
methotrexate for treating cancer (Kaposi's Sarcoma) in patients.” Answer, page 3. The
examiner also finds that “the reference clearly shows that while four patients were on
zidovudine (AZT) they received chemotherapy, methotrexate. In view of this, one of
ordinary skill in the art would be motivated to administer AZT with methotrexate to treat
cancer. The specific cancers being treated are clearly within the skill of the art.” Id.
The manner in which the examiner has put forth the statement of rejection has made
it difficult for us to clearly determine what the examiner considers to be obvious. For
example, in reading the statement rejection, the examiner has indicated that “one skilled in
the art would be motivated to administer AZT with methotrexate to treat cancer.” Answer,
page 3. The examiner has never explained why, in view of such motivation, one skilled in
the art would consider the claimed subject matter as a whole to have been obvious.
As set forth in the Manual of Patent Examining Procedure (MPEP) § 706.02(j) (6th
ed., no. 3, July 1997),
the examiner should set forth . . . (1) the relevant teachings of the prior art
relied upon, preferably with reference to the relevant column or page
number(s) and line number(s) where appropriate, (2) the difference or differ-
ences in the claim over the applied reference(s), (3) the proposed
modification of the applied reference(s) necessary to arrive at the claimed
subject matter, and (4) an explanation why such proposed modification
would have been obvious to one of ordinary skill in the art at the time the
invention was made.
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007