Appeal No. 2002-0019 Page 4
Application No. 08/517,949
Buechler II and Buechler III to make up for the deficiency in Collins. According
to the examiner each of the Buechler patents
teach raising antibodies to drug derivatives comprising the same
sulfur-containing linkers as instantly claimed and, consequently, it
would have been obvious to derivatize a TCA as taught by Collins
… at the secondary amine as taught by Collins and to attach the
sulfur-containing linkers of [any one of the] Buechler patents … at
the secondary amine of the TCA molecule because Collins
demonstrates successful derivatization of TCAs at that location and
because one would have been motivated to use the linkers
disclosed in the three Buechler patents because, in each of the
Buechler patents, drug derivatives using those linkers were
successfully used to raise antibodies for use in drug
immunoassays.
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]
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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