Appeal No. 2006-2415 Page 15
Application No. 09/410,336
orifices at the surface of the breast and into the lumens of the associated breast ducts.”
Id. at pages 11-12.
As motivation for delivering diagnostic agents such as Schmitt-Willich’s to breast
ducts in the manner described by Barsky, the examiner cited the ability “to identify the
location of lesions in one or more breast ducts or breast ductal networks by magnetic
resonance imaging for the purposes of excising the lesions and surrounding tissue by
conservative surgery and otherwise clinically intervening in the course of the disease as
soon as possible and as deemed appropriate following the localization of any
precancerous lesions.” Id.
The examiner noted that Barsky would have provided additional motivation for
practicing the washing step. The examiner stated that “because [Barsky] teaches
aspirated saline washings of the ductal lumen may be collected for further diagnostic
use, one ordinarily skilled in the art at the time the invention was made would have been
motivated to wash the lumen both to remove non-specifically bound targeting agent
before image acquisition and to collect cells for additional diagnostic use.” Id.
Appellants reiterate their argument that the cited references “either alone or in
combination, do not teach or suggest all the claim limitations.” Appeal Brief, page 15;
Reply Brief, page 8. Appellants urge that Barsky “simply does not teach or suggest the
use of a complexing agent[] to identify the location of cancerous breast cells within a
breast duct or breast ducts. Also, [Barsky] does not teach or suggest a method of
delivering a coupled compound to more than one breast duct or ductal network.”
However, as noted supra, a reference “must be read, not in isolation, but for what
it fairly teaches in combination with the prior art as a whole.” In re Merck & Co.,
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