Appeal No. 1997-4259
Application No. 08/259,474
35 U.S.C. § 103 based on Destouet alone, we will not sustain
this rejection. Stated simply, the examiner has not set forth
a prima facie case of obviousness. As was urged by appellants
on pages 10-12 of the brief, the mere fact that a claimed
species or subgenus may be encompassed by a prior art genus is
not sufficient by itself to establish a prima facie case of
obviousness. See In re Baird, 16 F.3d 380, 382, 29 USPQ2d
1550, 1552 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). In this regard,
we direct the examiner’s attention to § 2144.08 of the Manual
of Patent Examining Procedure (MPEP).
With respect to the examiner’s rejection of claims 2
through 11, 13 through 17 and 27 through 31 under 35 U.S.C. §
103 as being unpatentable over Destouet in view of appellants’
own specification (page 6, lines 4-20), in addition to
pointing out that Destouet (col. 3, lines 8-26) discloses an
implant filled with any biocompatible triglyceride, it is the
examiner’s position that
[a]pplicant [sic] admits that changing the
viscosity by reacting pure, fully saturated
fatty acids of the desire carbon length with
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