Appeal No. 1999-2523 Page 5
Application No. 08/475,791
lazaroid.” Therefore, appellant finds (Answer, page 10) “that the Malfroy-
Camine et al. patent does not suggest the subject matter of claim 57.”
With regard to Muller, appellant finds (Answer, page 11) the disclosure of
attempts “to use steroids to suppress the effects of TNFα, and that steroids can
be co-administered with cyclic imides to suppress the effects of TNFα do not
suggest that steroids should be used in combination with the salen-metal
complexes described by Malfroy-Camine et al. for treating free radical-
associated diseases[2].” Therefore, appellant concludes (id.), “Muller does not
provide the guidance which Malfroy-Camine et al. lack, and therefore, is of little,
if any, relevance with respect to claim 57.”
Appellant argues (Reply Brief, page 3) “[t]he question is always whether
the prior art teaches or suggests the claimed combination, not whether a
reference lists all of the ingredients. Without disclosure of specific combinations
or guidance as to how one selects specific ingredients, a listing of ingredients is
merely a suggestion to try various combinations.” With reference to In re Deuel,
51 F.3d, 1552, 1558-59, 34 USPQ2d 1210, 1215, appellant finds (Reply Brief,
page 6) that “[m]otivation to select the claimed combinations must be taught by
the prior art.”
In response, the examiner argues (Answer, page 4), “motivation for one to
arrive at a specific combination need not be the same as applicants’.” According
to the examiner (Answer, page 5) “selecting compounds from the combinations
2 We note the abstract of Malfroy-Camine discloses that “[t]he invention provides antioxidant
salen-metal complexes … to treat or prevent a disease associated with cell or tissue damage
produced by free radicals such as superoxide.”
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