Appeal No. 2000-0022
Application No. 08/888,173
OPINION
For the reasons set forth in the brief and reply brief, and
below, we reverse the above-noted rejection.
The issue before us concerns the examination of an
application which contains claims directed to a species or
subgenus of a chemical composition for compliance with 35 U.S.C.
§ 103 based upon a single prior art reference, Kautsky, which
discloses a genus embracing a claimed species or subgenus, but
does not expressly describe the particularly claimed species or
subgenus.
A. Background of case law in genus/subgenus cases
We note that the patentability of a claim to a specific
compound or subgenus embraced by a prior art genus should be
analyzed no differently than any other claim for purposes of 35
U.S.C. § 103. In re Papesch, 315 F.2d 381, 385, 137 USPQ 43, 47
(CCPA 1963).
Furthermore, use of per se rules by an examiner is improper
for determining whether claim subject matter would have been
obvious under 35 U.S.C. § 103. In re Brouwer, 77 F.3d 422, 425,
37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d
1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995); In re Baird,
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
Also, the fact that a claimed species or subgenus is
encompassed by a prior art genus is not sufficient by itself to
establish a prima facie case of obviousness. In re Baird, 16
F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994); In re
Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
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