Appeal No. 2001-1294 Page 7
Application No. 08/473,667
… they are significantly different in structure from anabaseine and DMAB-
anabaseine….” In addition, appellants point out (Brief, page 11), “neither the Tu
nor the Swanson references suggest a beneficial therapeutic effect for either
class of compound.” Regarding Leeson, appellants argue (Brief, page 11), “[t]he
Leeson reference relates to nicotine analogs and nicotinic compositions which
have been prepared as pharmaceutical compositions and administered to
patients. The active agents of the present invention are anabaseines, not
nicotine compounds.”
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000) citations omitted:
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.
In other words, “there still must be evidence that >a skilled artisan, ... with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem Inc. v.
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