Ex Parte MITCHELL et al - Page 13

              Appeal No.  2001-0942                                                       Page 13                       
              Application No.  08/473,960                                                                               

              Kotzab, 217 F.3d 1365, 1369, 5 USPQ2d 1313, 1316 (Fed. Cir. 2000).  The issue is                          
              whether there is “some motivation, suggestion or teaching of the desirability of making                   
              the specific combination that was made by the applicant,” id.  Examiner does not point                    
              anything in the references that teach or suggest administering the compound to a                          
              mammal after exposure to ionizing radiation.  Therefore, the initial burden of                            
              establishing a prima facie case of obviousness has not been satisfied.                                    
                     For the foregoing reasons, the rejection is reversed.                                              

                                                     REVERSED                                                           




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                                   SHERMAN D. WINTERS              )                                                    
                                   Administrative Patent Judge )                                                        
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                                                                   ) BOARD OF PATENT                                    
                                   WILLIAM F. SMITH                )                                                    
                                   Administrative Patent Judge )  APPEALS AND                                           
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                                   HUBERT C. LORIN                 )                                                    
                                   Administrative Patent Judge )                                                        













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