Appeal No. 2006-3202 Page 11
Application No. 10/323,592
through the vessel, the detection of plaque temperatures within the claimed range could
be considered an inherent result5 of carrying out the Casscells’ method. threshold
temperature and how this difference is reflected in the claimed subject matter.
2) Is there other prior art which would have enabled temperature measurements
of inflamed plaques to be have been made within the claimed range?
If Casscells ‘261 would not have enabled temperature measurements to have
been made in the claimed range, the Examiner should determine whether WO
01/742163, which is cited on page 7, lines 14-15 of the instant application as describing
a preferred temperature measuring device, is prior art to the instant application. If so,
the Examiner should consider whether there is adequate evidence to establish a prima
facie case of obviousness over the combination of it and Casscells ‘261.
Additionally, we note that WO 01/742163 is pending as U.S. Application No.
10/169,523, which appears to have the same assignee as the instant application. The
cited references in 10/169,523, particularly the references applied in the pending
rejections, may also be combinable with Casscells ‘262 to establish prima facie
obviousness of claims 30-33, or other pending claims in the instant application.
3) Is the instant application enabling under § 112, first paragraph, for diagnosing
plaques at a temperature “above zero but not more than 0.14°C”?
In order to make a rejection under § 112, first paragraph, the examiner has the
initial burden to establish a reasonable basis to question the enablement provided for
5 Because this reference is cited in the context of §103, we have not considered whether there is
sufficient evidence to establish inherent anticipation under § 102.
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