Appeal No. 2006-2415 Page 7
Application No. 09/410,336
easier to visualize specifically bound detecting compound, such as the antibody-
polymer-gadolinium complex taught by Schmitt-Willich. One of ordinary skill detecting
cancer cells in a breast duct with the antibody-polymer-gadolinium complex suggested
by Schmitt-Willich would therefore have considered it obvious to include a washing step.
Appellants argue that the cited references, “either alone or in combination, do not
teach or suggest all the claim limitations of claims 33 and 36-39.” Appeal Brief, page 4.
The examiner responds that “one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.” Answer,
page 13, citing In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981), and
In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Appellants urge
that the examiner’s argument “is incorrect because . . . the Examiner must satisfy all
three criteria to establish a prima facie case of obviousness including the criteria that all
of the limitations of the claims must be taught or suggested by the prior art.” Appeal
Brief, page 4, citing In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974).
We do not agree with Appellants that the cited references, when viewed in
combination, fail to suggest all limitations in claim 33. As argued by the examiner
(Answer, pages 13-14), in assessing obviousness “[the reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a whole.”
Merck, 800 F.2d at 1097, 231 USPQ at 380.
In our view, Appellants analyze each reference in isolation, rather than in the
combination presented in the appealed rejection, as Merck requires. For example,
Appellants urge that because gadolinium-DTPA is a non-specific imaging agent “[o]ne
of ordinary skill in the art simply cannot look to Yoshimoto et al. to learn a method of
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