Appeal No. 2001-0942 Page 7
Application No. 08/473,960
obvious using the claimed compounds in view of Mitchell claim 13. To resolve the
dispute we have carefully examined Mitchell claim 13. It specifically states that it is
directed to “a compound selected from the group consisting of the oxidized form [of the
recited compounds]” (see claim 12) and therefore the claim is more narrowly
constructed than it first appears. Also, Mitchell claim 13 calls for “an antioxidative
stress effective amount of a compound ….” This also narrows the claim; only those
compounds which can provide an antioxidative stress effective amount are included.
Furthermore, no evidence has been provided showing that Mitchell claim 13
nevertheless encompasses a large number of species and, if it does so encompass,
that many of them are not in fact encompassed by instant claim 17. There is every
indication therefore that Mitchell claim 13 covers a select number of compounds. One
of ordinary skill in the art would look to those well-known metal-independent nitroxides
and oxazolidine compounds which meet the criteria set forth in Mitchell claim 13. In
doing so, we are satisfied that one of ordinary skill would select those compounds
described in instant claim 17 to similarly treat the effects of oxidative stress.
With regard to the difference between Mitchell claim 13 which administers the
compound to an organism susceptible to oxidative stress due to ionizing radiation and
instant claim 17 which administers the compound after exposure to ionizing radiation,
appellants (Brief, p. 6) submit that the term “susceptible” in Mitchell claim 13 should be
interpreted to mean “before exposure to oxidative stress, such as ionizing radiation,” in
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