Appeal No. 2005-1117
Application 10/078,043
of the evidence of anticipation found in Eckhouse with appellants’ countervailing arguments for
non-anticipation in the brief, and based thereon, conclude that the claimed invention
encompassed by appealed claims 1 through 13 would have been anticipated as a matter of fact
under § 102(b).
Our review of the record on this appeal further leads us to agree with the supported
position advanced by the examiner that, prima facie, the claimed method for achieving the
meaningful suppression of the growth potential of a pathogen in a living organism encompassed
by appealed claim 10 would have been obvious over the combined teachings of Eckhouse and
Talmore to one of ordinary skill in this art at the time the claimed invention was made. In view
of the established prima facie case of obviousness, we again consider the record as a whole with
respect to this ground of rejection in light of appellants’ rebuttal arguments in the brief. See
generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We determine that in giving the language thereof the broadest reasonable interpretation in
light of the specification, claim 10 specifies a method comprising at least “applying a broad-
spectrum electromagnetic radiation from an apparatus according to Claim 11” to the locus of any
pathogen in any organism to achieve meaningful suppression of the growth potential of that
pathogen. Thus, the apparatus to be employed in the claimed method is defined in claim 11
which we have interpreted above. See Morris, supra; Zletz, supra.
Appellants submit that Eckhouse does not disclose the apparatus and that Talmore “fails
to teach or suggest the claim limitations which distinguish the claimed invention of claim 11
over” Eckhouse (brief, page 7). Appellants admit that Talmore “may teach some of the claim
limitations that [Eckhouse] is lacking, i.e., the treatment of pathogens and fungi” (id.). The
examiner responds that “Talmore was cited as a teaching of specifically treating skin pathogens
with light energy,” with the combined teachings suggesting that Eckhouse’s apparatus would
“inherently treat any pathogens located on the tissue” (answer, pages 6-7).
We find no argument by appellants with respect to claim 10 which further addresses
whether Eckhouse’s handheld flashlamp satisfies all of the limitations of claim 11, and thus, on
this record, we are in agreement with the examiner’s position in the here considered ground of
rejection. We are reinforced in our view by our finding above of the disclosure of the treatment
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