Appeal No. 2001-0598 Page 10
Application No. 08/451,090
disclosure that the compounds set forth in ’795 would have any properties in
common with those of appellants’ compounds.
We remind the examiner that our appellate reviewing court has made it clear
that 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 at 1558, 34 USPQ2d at
1214-1215 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
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