Appeal No. 2006-2415 Page 17
Application No. 09/410,336
We also do not agree with Appellants’ argument (Appeal Brief, pages 18-21) that
the cited references fail to provide a sufficiently specific teaching, suggestion or
motivation to practice the claimed invention. One of ordinary skill viewing the cited
references would have recognized that the claimed combination of steps would have
been desirable in a method of detecting cancer cells within the breast ductal network.
Thus, one of ordinary skill detecting cancerous lesions according to Yoshimoto
would have recognized from Schmitt-Willich the advantage of a more stable detectable
agent, as well as the diagnostic advantage of using an antibody specific for breast
cancer tumors. The skilled artisan also would have recognized that washing away non-
specifically bound detecting agent from the breast ductal network would result in less
background signal, thereby increasing assay specificity, much like the washing step in
Canto. Lastly, Barsky would have informed the skilled artisan of the advantages of non-
percutaneous cannulation. In our view, by looking only to the prior art cited by the
examiner, one of ordinary skill would have had incentive to practice the claimed
process.
Appellants’ additional arguments with respect to this rejection have been
adequately addressed above.
Therefore, we conclude that a preponderance of the evidence supports the
examiner’s position that Yoshimoto, Schmitt-Willich, Canto and Barsky would have
rendered claim 34 prima facie obvious. Claim 35 falls with claim 34.
Summary
We affirm the rejections of claims 33-39 under 35 U.S.C. § 103.
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007