Appeal No. 2006-0674 Page 5
Application No. 10/083,565
the initial duty of supplying the factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis. To the extent the
Patent Office rulings are so supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of the Patent Office
determination when there are deficiencies in the record as to the necessary factual
bases supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968) (emphasis
in original).
In our view, there are significant deficiencies and/or ambiguities in Broder’s
disclosure when the reference is considered in its entirety. As discussed above, the
basis of the examiner’s rejection appears to be that Broder provides evidence that it was
already known in the art that hepatocellular carcinoma could be treated with parenterally
administered docetaxel. The examiner’s interpretation of the reference appears to be
largely based on Broder’s assertions that his method may be used to treat “any [ ]
disease conditions responsive to paclitaxel, taxanes, docetaxel, [etc.]” (Broder, column
15, lines 32-37) and that “hepatocellular carcinoma and liver metastases” are “among the
types of carcinoma which may be treated effectively with oral paclitaxel, docetaxel, other
taxanes, [etc.]” (id., lines 40-43, emphasis ours).
Nevertheless, Broder does not explicitly teach that parenterally administered
docetaxel was known to be useful in treating hepatocellular carcinoma. Moreover,
Broder teaches that oral administration of paclitaxel (and by extension, docetaxel),
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