Appeal No. 2000-2081
Application 08/656,082
windings of “a multiple pole, multiple phase electric motor or
other dynamoelectric machine” (col. 1, lines 9-11) does
nothing to fill this gap. While the disclosure of a species
in a reference will anticipate a claim to a genus, the reverse
is not
true, and thus disclosure of the genus of dynamoelectric
machines in Anderson does not anticipate the species of a
salient pole motor as claimed by appellants.1
In light of the foregoing, and the examiner’s failure to
address certain limitations in the claims on appeal as pointed
out by appellants on pages 6-8 of their brief, we must refuse
to sustain the examiner’s rejection of claims 1 through 6, 12,
14, 16 through 19, 27 and 29 through 32 under § 102(b) as
being anticipated by Anderson.
1 While a rejection of independent claims 1, 14, 27, 29
and 30 based on obviousness has not been made by the examiner
and is thus not before us, we note in passing that the mere
fact that a claimed species or subgenus may be encompassed by
a prior art genus is also 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), In re
Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) and § 2144.08 of the Manual of Patent Examining
Procedure (MPEP).
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