Appeal No. 2004-1790 Page 6
Application No. 09/836,971
Appellants argue that “Crowson has a critical and fatal flaw. Crowson
exposes HT 29 colorectal cancer cells, in vitro, to various agents. There is not
one word concerning administration of the agents to a mammal as explicitly
claimed by the Appellants.” Appeal Brief, pages 9-10 (emphasis in original).
We agree. In order for a prior art reference to serve as an anticipatory
reference, it must disclose every limitation of the claimed invention, either
explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997). The examiner asserts that “Crowson discloses that
HT29 colorectal cells are of known malignancy and PEG inhibits the growth of
HT29 cancer cell lines,” arguing that “it is implicit that PEG is effective in treating
or inhibiting colon or rectal cancer.” That is not, however, explicit or inherent
teaching of administering the PEG to a mammal, thus Crowson fails to teach
every limitation of the claimed invention, and the rejection is reversed.
3. Rejection under 35 U.S.C. § 103(a)
Claims 9-11 and 15-19 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Crowson. The rejection is set forth below.
Crowson [ ] (described above) teaches the use and efficacy of
several cytocidal and bowel preparation agents such as PEG,
cetrimide, povidone iodine, etc. Crowson shows that the
compounds are capable of killing colorectal cell lines with different
efficacies and concludes that only cetrimide is capable of
completely killing the cells. However, the instant claims do not
mention the amount of therapeutic activity desired. Besides, PEG
still exhibits about 30 to 40% activity, which is considered to be
significant. Further, the results in table Iv [sic] shows [sic] that the
activity is varies [sic] with the compounds as well as incubation
time. Accordingly depending on the amount of activity desired, a
skilled artisan would be able to use PEG of Crowson, for different
time intervals with an expectation to achieve the desired
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