Appeal No. 2000-0022
Application No. 08/888,173
The aforementioned case law in this area has evolved from
the case of In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815
(CCPA 1964) (generally speaking there is nothing unobviousness
in choosing “some” among “many” indiscriminately). See also In
re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA 1971)
(“Lauerer’s disclosure is huge, but it undeniably includes at
least some of the compounds recited in appellant’s generic
claims and it is of a class of chemicals to be used for the same
purpose”). As best we can judge, the court in Lemin and Susi
applied a per se rule in reaching a conclusion of prima facie
obviousness.
Because a per se rule is now forbidden, an examiner must
determine whether one of ordinary skill in the relevant art
would have been motivated to make the claimed invention as a
whole, i.e., to select the claimed species or subgenus from the
disclosed prior art genus. In re Ochiai, 71 F.3d at 1570, 37
USPQ2d at 1131; In re Deuel, 51 F.3d 1552, 1557, 34 USPQ2d 1210,
1214 (Fed. Cir. 1995); In re Jones, 958 F.2d at 351, 21 USPQ2d
at 1943-44 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 692, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), cert. denied, 500
U.S. 904 (1991); In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257,
1258 (Fed. Cir. 1984).
To address this key issue, an appropriate determination
must be based upon the consideration of all relevant prior art
teachings, focusing on the following items. The categories of
relevant teachings enumerated below are those most frequently
encountered in a genus-species case, but they are not exclusive.
a. Size of the Genus
Consider the size of the prior art genus, bearing in mind
that size alone cannot support an obviousness rejection. There
is no absolute correlation between the size of the prior art
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007