Appeal No. 2001-0942 Page 12
Application No. 08/473,960
administration of OXANO to an organism - albeit the free radicals that the OXANO
scavenges are generated by chemical means and to Samuni to teach administration of
OXANO to scavenge free radicals obtained from the application of either ionizing
radiation or a chemical substance.
However, “[t]o establish a prima facie case of obviousness based on a
combination of references, there must be a teaching, suggestion or motivation in the
prior art to make the specific combination that was made by the applicant.” In re
Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). Here, examiner
has not established that chemical and ionizing radiation means are equivalent means
for generating free radicals in organisms such as mammals. Accordingly, it does not
suffice to say that Samuni shows administering OXANO to scavenge free radicals
obtained by applying either chemical or ionizing radiation means and Nilsson teaches
administering OXANO to an organism to scavenge free radicals generated through
chemical means. There is nothing that would lead one of ordinary skill to modify the
Samuni process such that the OXANO is administered to a mammal after exposing the
mammal to ionizing radiation. It is not enough to identify each element of the claimed
invention in the references since “identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed invention,” In re
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