Appeal No. 1999-1155
Application No. 08/241,253
Tweedle’s core tetraazacyclododecanes with certain of the substituents from Parker’s
triazacyclononanes to arrive at the presently claimed tetraazacyclododecanes.
We do not agree. In our view, it is somewhat misleading to characterize the
Parker and Tweedle references as describing “macrocycles with 3 or more nitrogens.”
Parker describes triazacyclononanes with three nitrogens, while Tweedle describes
tetraazacyclododecanes with four. The two types of compounds are mutually exclusive,
and thus, do not share “commonality of . . . structure.” Moreover, the only “commonality
of propert[y]” identified by the examiner is the ability of both tri-aza and tetra-azacyclo
compounds to bind gadolinium (Gd). Finally, Parker describes metal complexes of tri-
azacyclo compounds suitable for X-ray and radionuclide imaging, neither of which
depends on relaxivity for effectiveness.
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,
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