Appeal 2006-2350
Application 10/444,104
(Answer 12). The Examiner refers to case law applied in a previous office
action. It appears that the Examiner is referencing Ex parte George,
21 USPQ2d 1058, 1060 (BPAI 1991) and cases cited therein, namely,
In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990); Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989);
In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
The cases cited by the Examiner do not support a per se rule that
disclosure of a genus always renders a claimed species within the genus
prima facie obvious. Whether the selection of a species within a disclosed
genus would have been obvious depends on the facts of the case. In some
situations, a reference may even be considered to anticipate the claimed
subject matter within the meaning of 35 U.S.C. § 102. See In re Schaumann,
572 F.2d 312, 316-17, 197 USPQ 5, 9 (CCPA 1978) (Reference anticipated
because the genus embraced a very limited number of compounds closely
related to one another in structure such that the reference provided a
description of each of those compounds just as surely as if they were
identified in the reference by name, one of those compounds being the
claimed compound). Prima facie obviousness can be established where the
claimed species is specifically named, even if the claimed species is
disclosed among a multitude of effective combinations. Merck & Co. v.
Biocraft Labs., 874 F.2d at 807, 10 USPQ2d at 1846. But in other situations
where a prior art genus is extremely broad, a prima facie case of obviousness
under 35 U.S.C. § 103 may not arise at all. See In re Baird, 16 F.3d 380,
382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (Generic diphenol formula
disclosed in the reference encompassed more than 100 million diphenols,
only one of which was the claimed bisphenol A and there was nothing in the
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