Appeal No. 2006-2415 Page 5
Application No. 09/410,336
antibody specific for human breast tumors, thereby allowing visualization of the tumors.
Id.
The examiner also acknowledges that “Yoshimoto et al. does not teach washing
the breast duct into which the compound is injected to remove non-specifically bound
compound.” Id. at page 6. However, the examiner points out that “Canto et al. teaches
an endoscopic procedure comprising an in vivo washing step before identifying the
location of tumor tissue within a patient's body.” Id. at page 8. The examiner notes that
Canto identifies the location of tumor tissue in a patient by “contacting the tissue and
surrounding area with an identifying agent, allowing the identifying agent to bind to the
cells of the tissue, washing off the excess of an identifying agent, and localizing the
tumor tissue so identified.” Id.
As stated in In re Oetiker, 977 F.2d 1443, 1445-1446, 24 USPQ2d 1443,
1444-1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability. If that
burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.
. . . .
[T]he conclusion of obviousness vel non is based on the preponderance of
evidence and argument in the record.
We agree that a preponderance of the evidence supports the examiner’s position
that the cited teachings would have rendered the process recited in claim 33 prima facie
obvious. Specifically, it would have been obvious to substitute Schmitt-Willich’s
gadolinium-polymer complex for the gadolinium-DTPA used in Yoshimoto’s breast duct
evaluation, because Schmitt-Willich teaches that the gadolinium-polymer complex is
more stable than gadolinium-DTPA, as well as having other advantages. Schmitt-
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