Appeal No. 2001-0942 Page 6
Application No. 08/473,960
formation of free radicals by ionizing radiation. General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278-79, 23 USPQ2d 1839, 1844
(Fed. Cir. 1992).
After careful review of examiner's position2, we conclude that examiner has
demonstrated that instant claim 17 is an obvious variation of Mitchell patent claim 13.
With regard to the difference between administering an oxidized form of the
metal-independent nitroxide or oxazolidine (as in Mitchell) and administering one of the
metal-independent nitroxide or oxazolidine as instantly claimed, examiner (Examiner’s
Answer, p. 5) argues that the compounds described in Mitchell claim 13 encompass
what is claimed. Appellants (Brief, p. 6) argue that Mitchell’s claim is generic and fails
to teach the particular formulas for the metal-independent nitroxide and oxazolidine that
are illustrated in instant claim 17. Accordingly, as to the compounds to be
administered, both parties agree that Mitchell claim 13 is broader in scope than that of
instant claim 17. The dispute appears to be whether one of ordinary skill reading the
Mitchell claim would have selected the compounds claimed to render prima facie
2 The Examiner’s Answer, p. 4, states, in its entirety, “[a]lthough the conflicting claims are not identical,
they are not patentably distinct from each other because they are drawn to methods overlapping in scope.”
Examiner goes further in the Final Rejection (Paper no. 23, p. 3): “It would have been obvious to one of
ordinary skill in the art to apply the method of patented claims 12-13, selecting ionizing radiation as the
source of oxidative stress as per claim 13. One would have been motivated to do so because the claim
clearly encompasses this alternative within the broader method. Upon making this selection, and selecting
one or more of the metal-independent nitroxides, one would arrive at the method of the instant claims.”
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