Appeal No. 2006-2415 Page 10
Application No. 09/410,336
We note that Schmitt-Willich does not provide a working example of locating a
tumor within a breast duct. However, Schmitt-Willich does provide a working example of
preparing an antibody-polymer-gadolinium complex. Column 61, lines 41-67. Schmitt-
Willich also provides a working example where the detectable antibody complex renders
a subcutaneous colon carcinoma in a mouse “clearly visible by the concentration of the
contrast medium[,]” as well as distinguishing that tumor from one derived from a different
cell line. Column 62, lines 1-14.
In our view, one of ordinary skill in the art viewing these teachings from Schmitt-
Willich would have concluded that cancer cells within breast ducts would have been
visualized by administering a breast cancer-specific antibody-polymer-gadolinium
complex as taught by Schmitt-Willich, to the breast ducts in the manner disclosed by
Yoshimoto.
Moreover, Appellants have not provided any evidence undermining Schmitt-
Willich’s presumptively enabled disclosure. They therefore have not carried their
burden of establishing that the cited disclosures are not enabling. See In re Kumar, 418
F.3d 1361, 1368, 76 USPQ2d 1048, 1052-1053 (Fed. Cir. 2005) (Appellants bear the
burden of establishing that prior art is not enabled).
Appellants next argue that “the washing step described in Canto et al. can not be
used to improve the specificity of the test by reducing the generation of non-specific,
undesired signals because methylene blue does not stain specifically.” Appeal Brief,
page 7; see also, Reply Brief (filed August 12, 2005), pages 5-6.
We do not agree with Appellants’ reading of Canto. The Canto article is entitled
“Methylene blue selectively stains intestinal metaplasia in Barrett’s esophagus.” Canto,
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