Appeal No. 1999-0028
Application No. 08/513,610
combined McMahon and Sklar teachings would not have been
suggestive of the diagnosis method now claimed. McMahon
(column 1, lines 38 through 42, column 2, lines 40 through 44,
and column 4, lines 3 through 8) uses pictures for diagnostic
review, while the diagnostic aspect of the laser surgery
teaching of Sklar (column 22, lines 1 through 18) is achieved
by viewing displayed images (Fig. 2). Thus, notwithstanding
the circumstance that appellant may be now doing automatically
what was previously done manually, the evidence before us
simply would not have been suggestive of the content of method
claim 12, in particular. The rejection of appellant’s claims
12 and 16 through 19 cannot therefore be sustained.
REMAND TO THE EXAMINER
We remand this application to the examiner to consider
the patentability of the claimed method under 35 U.S.C. §
103(a) taking into account the customary diagnostic comparison
procedure manually carried out by an iridology practitioner2
2See the background of the invention section of
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