Appeal No. 2004-0670 Page 5
Application No. 09/276,741
reasonable likelihood of success, viewed in the light of the prior art.” In our
opinion, the examiner has failed to demonstrate that the prior art suggests
appellants’ claimed dosage. In this regard, we remind the examiner that “[t]o
imbue one of ordinary skill in the art with knowledge of the invention in suit, when
no prior art reference or references of record convey or suggest that knowledge,
is to fall victim to the insidious effect of a hindsight syndrome wherein that which
only the inventor taught is used against its teacher.” W.L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
For the foregoing reasons, we reverse the rejection of claims 1-8, 48 and
49 under 35 U.S.C. § 103 as being unpatentable over the combination of Bishop,
Ramu, Rahman and Maier.
Claim 73:
Unlike claims 1-8, 48 and 49, claim 73 does not require the administration
of a particular dosage of estramustine phosphate. To the contrary, claim 73
requires the intravenous administration of liposome encapsulated estramustine
phosphate.
As both the examiner (Answer, page 4), and appellants (Brief, page 5)
recognize, Maier teach the intravenous administration of estramustine
phosphate. Similarly, Ramu teaches (column 1, lines 32-33), “[m]ost
antineoplastic drugs are administered by intravenous injection of infusion.” In
addition, Ramu teaches (id., lines 33-45), “[m]any of these [antineoplastic] drugs
are vesicants or local irritants and produce severe soft tissue damage upon
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