Appeal No. 1999-2703
Application No. 08/772,068
the genus. Consequently, evidence can be presented to show3
that the species is patentable over the genus. See, e.g.,
Petering, 301 F.2d at 681-83, 133 USPQ at 279-81. Thus,
completing the analogy, I find that a range that overlaps
another range at only a single point renders the first range
obvious, and that it is then necessary to consider evidence of
unexpected results to determine the patentability of the first
range.
In conclusion, the overlap of the ranges of Hamaguchi and
the claimed invention is insufficient to constitute anticipation
of the claims. Therefore, I would reverse the rejection of
claims 1 and 3 under 35 U.S.C. § 102(e). I agree with the
majority's reversal of the rejection of claims 5 and 7 under 35
U.S.C. § 102(e) and claims 6 and 8 under 35 U.S.C. § 103 both
for the reasons set forth by the majority and also for the
reasons discussed supra with respect to claims 1 and 3. I also
agree with the majority's affirmance of the rejection of claims
2 and 4 under 35 U.S.C. § 103, since the overlapping ranges
3 Compare 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, in which the
court held that a species may not necessarily be obvious over a genus where
the genus includes a large number of species.
22
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007