Appeal No. 2002-1629 Page 5
Application No. 08/863,121
the burden of coming forward with evidence or argument shift to the applicant.”
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
In this case, we conclude that the examiner has not adequately shown
that a person of ordinary skill in the art would have been motivated to combine
the hydroxylamine taught by Bunn with the quaternary ammonium salts taught by
Toda and Ledis. Bunn discloses that hydroxylamine is one of several agents that
directly oxidize hemoglobin (Table 16-3, page 642). Bunn also discloses that
nitrites, among other agents, oxidize hemoglobin via interaction with oxygen.
See id.
The examiner concluded that this disclosure would have led those skilled
in the art to view hydroxylamine and nitrites as “known equivalents.” The
examiner also relied on Toda’s teaching that a quaternary ammonium salt is
combined with an oxidizing agent selected from the group consisting of “nitrite
ion, quinone compound, alloxan, methylene blue, aniline, acetanilide,
nitrobenzene, acetophenetidin, nitrotoluene, sulfonamide, phenylhydrazine,
ascorbic acid or aminophenol.” Col. 3, lines 59-62. See the Examiner’s Answer,
page 9. Taken together, in the examiner’s view, these disclosures would have
suggested substituting hydroxylamine for the sodium nitrite used by Toda, to a
person of ordinary skill in the art.
We disagree. “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
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