Appeal No. 2000-1294 Page 4
Application No. 08/850,924
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985).
On this record, the examiner finds (Answer, page 4) that “Holton
generically discloses compounds of the instant claims and their use as anti-
tumor agents.” According to the examiner (id.) “[t]he difference between the
instant invention and that of Holton is in the generic descriptions of the claimed
compounds.” Stated differently, Holton does not specifically teach the claimed
compounds, instead, Holton discloses a genus of compounds that encompass
appellants’ claimed compounds. While appellants do not dispute that their
claimed invention may be included within the Holton genus, they point out (Brief,
page 5) that “[t]he issue is NOT whether persons of ordinary skill would be led to
prepare additional compounds. Rather, the issue is whether a person of ordinary
skill would be led to prepare the tetracyclic, 1-deoxy compounds specifically
defined by claim 2.”
To make up for the deficiency in Holton, the examiner simply concludes
(Answer, page 4) “the instantly claimed invention is prima facie obvious from the
teaching of Holton because the indiscriminate selection of ‘some’ among ‘many’
is prima facie obvious. In re Lemin, [332 F.2d 839,] 141 USPQ 814 [CCPA
1964)].” In response, appellants argue (Reply Brief, page 2) “to arrive at the
compounds claimed herein is not as simple as merely selecting C1-deoxy from
among the C1 substituents. The claims herein also require a specific set of C2,
C4, C6, C7, C9, C10 and C13 substituents. While many of these substituents
also fall within the generic structure disclosed by Holton, nowhere in Holton is it
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