Appeal No. 1999-0339
Application 07/903,588
First, the examiner’s conclusion appears to be based on an incorrect
supposition. That is, as we understand it, the examiner believes that DNA locus of met
proto-oncogene has been lost, and therefore, he assumes that no Met protein will be
present in the breast tumor cells. However, as pointed out by the appellants, this is not
correct. Bièche’s studies show that in breast tumor patients having the heterozygous
(LS) genotype, only one of the two parental copies of the met proto-oncogene is lost in
those patients whose prognosis is poor. Thus, one of ordinary skill in the art would
have understood that some Met protein would still be present. Accordingly, we do not
find any suggestion in Bièche to use the antibodies taught by Park to screen tumor
tissue in order to predict the prognosis of breast cancer.
Second, the examiner has not pointed out any teaching or suggestion in Park to
employ the antibodies described therein which recognize MET-related proteins in a
method for predicting the prognosis of breast cancer which comprises comparing the
binding of antibody specific for Met protein in normal breast tissue with the binding of
said antibody in breast tumor tissue as described in claims 2-4.
On this record, the only place where we find any suggestion to employ
antibodies in the manner required by the claims is in the specification. Thus, we find
that he has engaged in impermissible hindsight in making his determination of
obviousness. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
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