Appeal No. 95-4754
Application No. 08/111,905
obvious to those of ordinary skill in the relevant art. See In
re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986). The mere fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself
render that compound obvious. See 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). As the
disclosure of the Yachigo reference is unavailable to show
obviousness of appellants’ invention and there being no other
evidence of record, there is no way this board can find an
inconsequential occurrence of appellants’ invention to be an
obvious variant of Yachigo's claim 19. Accordingly, we
conclude that there is no obviousness-type
double patenting. Hence the requirement for a terminal
disclaimer was improper.
We next turn to what appears to be a provisional
rejection by the examiner over Yachigo under 35 U.S.C. § 103
based upon the Yachigo patent qualifying as prior art under 35
U.S.C. § 102(f) or (g) (Answer, page 6). The evidence present
discloses that U.S. Patent 5,281,646 was issued to Shinichi
Yachigo, Kanako Ida and Hiroshi Kojima and assigned to
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