Appeal No. 1996-0896
Application No. 08/091,406
substituents from the generic formula disclosed by Saito that
would encompass the claimed subject matter (see the Answer,
page 4). Accordingly, we do not sustain the examiner’s
rejection of claims 1 through 3 under 35 U.S.C.
§ 102(e) as anticipated by Saito.
B. The Rejection under 35 U.S.C. § 103
Appellants and the examiner agree that the generic
disclosure of Saito encompasses the claimed subject matter.
As noted by appellants on page 16 of the Brief, In re Baird2
states that “[t]he fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself
render that compound obvious.” See also In re Jones, 958 F.2d
347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). The examiner
does not contradict appellants’ argument that Saito does not
exemplify any compounds with a terminal group of “branched
alkyl” and also does not exemplify any compounds with two
asymmetric carbon atoms in the terminal chain (Answer, page
6). The examiner states that Saito “suggests” asymmetric
carbon substituents by disclosing, at column 3, lines 5-10,
216 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
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