Appeal No. 1998-2588
Application No. 08/673,702
would have a reasonable expectation that any of the species of the genus
would have similar properties and, thus, the same use as the genus as a
whole . . . One having ordinary skill in the art would have been motivated to
select the claimed compounds from the genus in the reference since such
compounds would have been suggested by the reference as a whole.
If we understand the examiner’s rationale, it is that each of the mandatory
components of the claimed Formula I (e.g., the sulfur at position 1 of the base ring structure
which gives the claimed compounds their benzothiophene designation; the carbonyl group
bridging a phenyl group and the carbon at position 3 of the base ring structure; and the
3 4
second carbonyl group bridging variable moieties R and R ), and at least one of each of
1 3 4
the variable moieties (e.g. R, R , R , R ), can be found among the numerous options listed
1
for each moiety of Cameron’s Formula I (A, B, Z, X, Y, D, E, Z , G and R), thus, it would
have been obvious “to select any of the species of the genus taught by the reference” as
the claimed species would have been “suggested by the reference as a whole.”
Even assuming, for the sake of argument, that Cameron does encompass the
claimed compounds when specific variables are chosen in specific combinations, we
disagree with the examiner’s conclusion. As indicated in In re Baird, 16 F.3d 380, 382, 29
USPQ2d 1550, 1552 (Fed. Cir. 1994), “[t]he fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself render that compound
obvious. In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).”
Nevertheless, beyond providing an oblique reference to Cameron’s intermediate
compound 6b-2 (a benzothiophene with a carbonyl group linking a substituted phenyl
4
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