Appeal No. 1996-0896
Application No. 08/091,406
pyrimidyl-phenyl compounds which have the same terminal group
as the claimed compounds, i.e., R of formula(I) of Saito can2
be branched alkyl and is attached to an asymmetric carbon with
a fluorine substituent (Answer, page 4).
Appellants state a “rule” on page 7 of the Brief that “a
prior genus which does not explicitly disclose a species does
not anticipate a later claim to that species.” However, a
genus may, under the appropriate circumstances, constitute a
description of a specific compound falling within the genus
but not specifically named. See In re Schaumann, 572 F.2d
312, 316, 197 USPQ 5, 9 (CCPA 1978). It is the examiner who
bears the initial burden of presenting any prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Here we determine that
the examiner has not met the initial burden of establishing
that the disclosure and teachings of Saito constitute a
description of the claimed subject matter within the meaning
of 35 U.S.C. § 102. See Schaumann, supra; In re Petering, 301
F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962). The examiner
has not met the initial burden by merely pointing to possible
4
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