Appeal No. 1999-2523 Page 6
Application No. 08/475,791
taught by the reference and finding that the combination is effective against
certain viruses … is to be expected and not unexpected in nature.” With regard
to Muller, the examiner agrees with appellant (id.) that “Muller does not teach or
suggest that steroids would be expected to provide a beneficial effect when used
in combination with antioxidants generally or in combination with specific
antioxidant salen-metal complexes described by Malfroy-Camine.” However, the
examiner argues (id.):
Muller is relied upon for its teachings of the knowledge in the art of
TNF’s inflammatory nature and its activation of NFKB and thus, a
potential activator for HIV and other retro[-]viruses inhibition, and
for its’ teachings of the knowledge in the art of the suppression []of
the effects of TNF by the steroids, dexamethasone and
prednisolone.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. … Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.” …
Most if not all inventions arise from a combination of old elements.
… Thus, every element of a claimed invention may often be found
in the prior art. … However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. … Rather, to establish obviousness based
on a combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicant.
[citations omitted]
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