Appeal No. 97-1278
Application No. 08/046,286
that R can be alkenyl, Rieger provides specific direction for
the presently claimed substituent and, again, the choice of
alkenyl is only one from four possible substituents.
Furthermore, Rieger's definition of X nearly coincides with
appellants' definition of X in the appealed claims, i.e.,
Rieger adds only OCHF to the four substituents claimed by
2
appellants for X. We note that in such cases of selection the
issue is typically whether the prior art anticipates under §
102 or renders obvious under § 103 a claimed invention, not
whether a limited degree of selection from the prior art
establishes a prima facie case of obviousness. See, for
example, In re Schaumann, 572 F.2d 312, 316-17, 197 USPQ 5, 9
(CCPA 1978); In re Petering, 301 F.2d 676, 682-83, 133 USPQ
275, 280-81 (CCPA 1962). In re Jones, 958 F.2d 347, 21 USPQ
1941, represents an exception to the general rule since in
Jones the reference disclosed a potentially infinite genus
which embraced but did not point to the claimed salt of an
acid known as "dicamba," and, therefore, is not controlling
here.
Appellants also maintain that In re Braat, 937 F.2d 589,
594, 19 USPQ2d 1289, 1293 (Fed. Cir. 1991) requires us to apply
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