Appeal No. 1997-2743
Application No. 08/442,252
We disagree. The examiner has merely established that individual elements of the
claimed invention were known in the prior art: cyclodextrins were known stabilizers for
99m
Tc -dioxime radiopharmaceutical complexes; and phosphines, like dioximes, were
99m
known ligands in Tc radiopharmaceuticals. In our view, these facts alone do not provide
a reason or suggestion to make the specific combination made by appellants.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [] Close adherence to
this methodology is especially important in cases where the very ease with
which the invention can be understood may prompt one “to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.” []
Most if not all inventions arise from a combination of old elements. [] Thus,
every element of a claimed invention may often be found in the prior art. []
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. [] Rather, to
establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the
applicant. [citations omitted]
In other words, “[o]ne cannot use hindsight reconstruction to pick and choose
among isolated disclosures in the prior art to deprecate the claimed invention.” In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988). “[T]here still must be
evidence that ‘a skilled artisan, . . . with no knowledge of the claimed invention, would
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