Appeal No. 2006-2415 Page 14
Application No. 09/410,336
Yoshimoto. One skilled in the art would also have reasonably expected that removing
unbound detecting agent by washing in the manner described by Canto would have
removed undesired background signals, thereby increasing the specificity of the assay.
Therefore, a preponderance of the evidence supports the examiner’s position
that Yoshimoto, Schmitt-Willich and Canto would have rendered claim 33 prima facie
obvious. Claims 36-39 fall with claim 33.
3. Obviousness of claims 34 and 35
The examiner has also rejected claims 34 and 35 as obvious in view of
Yoshimoto, Schmitt-Willich, and Canto as applied to claims 33 and 36-39, and in further
view of Barsky.4 Answer, page 9. Acknowledging that Yoshimoto, Schmitt-Willich and
Canto do not teach the steps recited in claims 34 and 35,5 the examiner asserts that
Barsky “teaches delivering a desired diagnostic material through one or more orifices at
the surface of the breast and into the lumens of the associated breast ducts by
cannulation or catheterization without piercing or perforating the skin; see entire
document (e.g., column 6, lines 54-55).” Id. at page 10.
The examiner asserts that Barsky would have rendered obvious claim 34’s step
of delivering the coupled diagnostic compound by non-percutaneous cannulation or
catheterization of the breast duct because Barsky teaches that the claimed method is “a
means by which a desired diagnostic material can be instilled through one or more
4 Barsky et al., U.S. Patent 6,168,779 B1, issued January 2, 2001 (application filed
September 16, 1997).
5 In the rejection of claims 34 and 35, the examiner incorrectly refers to Schmitt-Willich as “US Patent
6,168,779 B1.” Answer, page 10, first and second full paragraphs. It is clear from the context, however,
that the examiner intended to refer to Schmitt-Willich. The examiner’s discussion on page 10 of the
Answer also refers to U.S. Patent 4,628,027. However, the examiner has pointed out that citing that
patent “was inadvertent error, as the prior art reference has not been considered, or relied upon in
determining the obviousness of the claimed invention.” Answer, page 3.
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