Appeal No. 1997-3787
Application No. 08/275,241
v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843,
1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Arkley,
455 F.2d 586, 587-88, 172 USPQ 524, 526 (CCPA 1972).
Here, Haijima specifically names a limited number of
substituents useful for Formula (D). The inclusion of some of
these specific substituents in Formula D results in the
claimed compound and composition. In addition, Haijima
discloses specific color developing agents designated as D-30,
D-31, and D-34, which are structurally similar to the claimed
color developing compound D-1. Given Haijima’s disclosure of
a limited genus inclusive of the claimed compound, with its
specific preference for compounds structurally similar to that
claimed, we agree with the examiner that Haijima would have
rendered the claimed subject matter prima facie obvious to one
of ordinary skill in the art.
However, we also agree with appellants that the prima
facie case of obviousness established by the examiner is
rebutted by the specification examples relied upon by
appellants. As argued by appellants, a showing of unexpected
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007