Appeal No. 2006-0674 Page 4
Application No. 10/083,565
tumors and metastases” (id., column 15, lines 52-57). Broder “also comprehends
methods of treating mammalian patients afflicted with cancers, tumors, . . . and any other
disease conditions responsive to paclitaxel, taxanes, docetaxel, etoposide, prodrugs and
derivatives of all the foregoing . . . Among the types of carcinoma which may be treated
particularly effectively with oral paclitaxel, docetaxel, other taxanes, and their prodrugs
and derivatives, are hepatocellular carcinoma and liver metastases, and cancers of the
gastrointestinal tract, pancreas and lung” (id., column 15, lines 32-44).
Claim 7, which represents the claimed invention in its broadest aspect, requires
intravenous administration of docetaxel to a patient with hepatocellular carcinoma.
According to the examiner, “there are not enough blaze marks [in Broder] to conclude
that the invention of claim 7 is anticipated” (Examiner’s Answer, page 4), but claim 7 is
nevertheless unpatentable because “Broder [ ] discloses (col. 9, lines 1-12) that
docetaxel (“heretofore administered only parenterally”) is useful for treating
hepatocellular carcinoma and liver metastasis (col. 15, line 43)” (id., page 3).
The only differences between Broder and the claimed invention identified by the
examiner concern limitations appearing only in claims dependent on claim 7. If we
understand the examiner’s reason for concluding that claim 7 is unpatentable, then, it is
that Broder provides evidence that docetaxel was already known in the art to be “useful
for treating hepatocellular carcinoma” parenterally at the time of the invention (id.).
Nevertheless, in our view, the examiner’s interpretation of Broder’s teachings
goes too far. “A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention from the
prior art. In making this evaluation, all facts must be considered. The Patent Office has
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007