Appeal 2006-2514
Application 10/233,562
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on one reference alone without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67
(CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2
(CCPA 1966).
ANALYSIS
As our findings supra indicate, the limitations of claims 1, 2, 4, 6 to 8,
10 to 13, 15, 17, 18, 20, 21 and 23 read directly on the brain and
neurological analysis teachings of Kennedy. The breast analysis teachings
of Gilhuijs are merely cumulative to teachings already present in Kennedy.
With respect to claims 3, 5, 14 and 16, we hold that the skilled artisan
would have used the statistical segmentation teachings of Gilhuijs to aid in
the identification of a tumor in surrounding tissue in Kennedy.
To the extent that Appellants’ disclosed and claimed biomarker
comprises a “higher-order measurement” as set forth in claims 22 and 24, we
hold that Kennedy’s biomarker is likewise a “higher-order measurement.”
Turning lastly to claims 9 and 19, Appellants have not presented any
patentability arguments for these claims apart from the arguments presented
for the independent claims on appeal.
CONCLUSION OF LAW
The obviousness rejection of claims 1, 2, 4, 6 to 8, 10 to 13, 15, 17,
18, 20, 21 and 23 is sustained based on the teachings of Kennedy. The
obviousness rejections of claims 3, 5, 9, 14, 16, 19, 22 and 24 are sustained
based upon the teachings and suggestions of the applied references.
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