Appeal No. 2001-1586 Page 8
Application No. 08/402,394
in Markussen ‘212 as the intermediate to use in Grau ‘322 to form insulin-ArgB31-OH.
We think the examiner’s leap from Grau ‘332 to Markussen ‘212 was guided by
appellants’ disclosure of the present invention instead of the references themselves.
The examiner’s analysis bespeaks more of an impermissible hindsight analysis instead
of a reasoned explanation of why the applied art suggests the compound of claim 33.
Thus, we do not find that the examiner has properly established a prima facie case of
obviousness.
As set forth above, this finding mandates reversal of all obviousness rejections
set forth in the Examiner’s Answer.
OTHER ISSUES
Viewing the disclosure of Markussen ‘212 while focused solely on the subject
matter of claim 33 on appeal, we believe Markussen ‘212 is more relevant in
determining the patentability of the compound of claim 33 than either the examiner or
appellants have recognized on this record.
Markussen ‘212 does describe a genus of insulin precursors at column 2, line 63-
column 3, line17, which encompasses a large number of compounds. As indicated
above, Jones and Baird stand for the proposition that a broad chemical genus such as
that described in Markussen ‘212 does not necessarily render obvious any specific
species encompassed therein. However, that is not the end of the matter. In In re
Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962) the court was confronted with a
similar factual situation. The court stated that even though Petering’s claimed
compounds were encompassed by a broad generic prior art disclosure, the court
concluded that the broad disclosure by itself described the claimed compounds within
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