Appeal No. 2005-2671
Application No. 09/971,774
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). With this as background, we analyze
the prior art applied by the examiner in the rejection of the claims on appeal.
According to the Examiner (Answer, pages 3-4)
JACOBI teaches that the intraperitoneal adminstration [sic] of
taurolidine or a combination of taurolidine and heparin at the time of
laparoscopic surgery for tumor removal reduces the incidence of tumor
growth and trocar metastases. See abstract. The reference discloses that
lavage with taurolidine and heparin is performed in human patients
undergoing laparoscopic resection of malignancies. See last paragraph of
the reference on page S35. The reference does not explicitly describe
each and every step in such a procedure.
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The reference does not teach the use of taurultam in the
concentration range recited in this procedure or the use [of] such a
solution before surgery or after closing - step (5).
To make up for the failure of Jacobi to teach administration of taurolidine
after surgical closing, the examiner relies on Monson. According to the examiner, the
reference states "[i]t is particularly beneficial to use taurolidine and/or taurultam [to]
prevent the spread of metastases, especially following surgical removal of tumours."
Answer, page 4.
The examiner concludes (Answer, page 5)
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