Appeal No. 2001-1294 Page 4
Application No. 08/473,667
guidelines of how nicotine can be incorporated into pharmaceutical
composition[s] for treatment of memory impairment.”
Based on this evidence the examiner concludes (id.):
Because Tu taught that anabaseine is 15 times as potent
then [sic] nicotine, Meyes taught that anabaseine and
nicotine are functionally equivalent in brain, Swanson
suggested that neuromuscular toxin can be useful in treating
CNS nicotinic receptor pathology, Leeson provided
guidelines in dosage of nicotine to be administered, … [the]
artisan in the field is in possession of a pharmaceutical
composition comprising anabaseine or DMAB-anabaseine
which Appellants used to improve memory.
While the examiner has accumulated references that touch on each
limitation of appellants’ claimed invention, for the reasons that follow it is our
opinion that the examiner has failed to identify any suggestion that would have
led a person of ordinary skill in the art at the time the invention was made to
combine the references. Prima facie obviousness based on a combination of
references requires that the prior art provide “a reason, suggestion, or motivation
to lead an inventor to combine those references.” Pro-Mold and Tool Co. v.
Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed.
Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
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