Appeal No. 2000-1294 Page 5
Application No. 08/850,924
suggested that these substituents should be selected among the vast number of
possibilities when C1 is deoxy.” In addition, appellants point out (Brief, page 5),
“in the most preferred embodiment of the Holton process, the process is used to
prepare 1-hydroxy and NOT 1-deoxy compounds [footnote omitted].”
We must emphasize, there are no per se rules of obviousness or
nonobviousness. In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133
(Fed. Cir. 1995) (“reliance on per se rules of obviousness is legally incorrect.”).
Accord, In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir.
1996); In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
Therefore, the fact that a claimed species or subgenus is encompassed by a
prior art genus is not sufficient by itself to establish a prima facie case of
obviousness. See, Baird, 16 F.3d at 382, 29 USPQ2d at 1552 (“The fact that a
claimed compound may be encompassed by a disclosed generic formula does
not by itself render that compound obvious.”); In re Jones, 958 F.2d 347, 350,
21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (Federal Circuit has “decline[d] to
extract from Merck [& Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 10
USPQ2d 1843 (Fed. Cir. 1989)] the rule that ... regardless of how broad, a
disclosure of a chemical genus renders obvious any species that happens to fall
within it.”). As the court recognized in Deuel, 51 F.3d 1552, 1558, 34 USPQ2d
1210, 1214-1215 (Fed. Cir. 1995) in those cases where a prima facie case of
obviousness is based upon structural similarity “the prior art teaches a specific,
structurally-definable compound and the question becomes whether the prior art
would have suggested making the specific molecular modifications necessary to
achieve the claimed invention.” Stated differently, there must be some reason or
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