Appeal No. 2006-2415 Page 12
Application No. 09/410,336
Appellants argue that “[t]here is no clear, particular suggestion or motivation in
the prior art to combine the teachings in the applied references in the proposed manner
to arrive at the specific method of identifying the location of breast cancer cells within a
breast duct” using the steps recited in the claims. Appeal Brief, page 11; see also Reply
Brief, page 7. Appellants argue that the lack of a specific motivation to combine the
cited prior art results in an inappropriate “obvious to try” rejection, and that “the general
teachings of administering non-specific contrast agents and dyes to patients are not
sufficient to make Applicants’ invention obvious.” Appeal Brief, pages 12-13.
We do not agree that the cited references lack the specificity required to motivate
one skilled in the art to practice the claimed invention. “[T]he ‘motivation-suggestion-
teaching’ test asks not merely what the references disclose, but whether a person of
ordinary skill in the art, possessed with the understandings and knowledge reflected in
the prior art, and motivated by the general problem facing the inventor, would have
been led to make the combination recited in the claims.” In re Kahn, 441 F. 3d 977,
988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
In our view, one skilled in the art would have recognized that, because they were
capable of locating breast cancer cells, Schmitt-Willich’s breast cancer-specific
antibody-polymer-gadolinium complexes would have been useful in Yoshimoto’s
methods of detecting breast cancer tumors within breast ducts. In addition to conferring
higher specificity through antibody binding, Schmitt-Willich provides motivation for using
antibody-polymer-gadolinium complexes in Yoshimoto’s methods by disclosing
(column 8, lines 19-27) that “the polymer complexes according to the invention . . . are
more stable than Gd-DTPA,” i.e., the gadolinium-DTPA complex taught by Yoshimoto.
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