Appeal 2007-2242
Application 10/352,997
Conclusion
Having considered all the evidence of record for and against the
patentability of Claims 1-15 of Application 10/352,997 under 35 U.S.C.
§ 103(a), we reverse the appealed final rejection.
Order
Upon consideration of the appeal, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting Claims 1-15 of
Application 10/352,997 under 35 U.S.C. § 103(a) is reversed; and
FURTHER ORDERED that the case be returned to the Examiner for
action consistent herewith.
REVERSED
NAGUMO, Administrative Patent Judge, concurring.
Although I agree with the conclusions of my colleagues, I write
separately to emphasize my view that this case falls into the classic problem
of deciding when a species—more accurately, a subgenus—within the scope
of a broadly disclosed genus, is prima facie obvious.
Technologically, as indicated by Lee, steel alloys are members of an
extraordinarily complex class. Relatively small amounts of various elements
can have large and largely unpredictable physical consequences. In a
similarly complex situation (herbicidal activity of organic compounds), the
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