Appeal No. 2000-0022
Application No. 08/888,173
genus and a conclusion of obviousness. Thus, the mere fact that
a prior art genus contains a small number of members does not
create a per se rule of obviousness. Some motivation to select
the claimed species or subgenus must be taught by the prior art.
See, e.g., Deuel, 51 F.3d. at 1558-59, 34 USPQ2d at 1215.
However, a genus may be so small that it would anticipate the
claimed species or subgenus. For example, it has been held that
a prior art genus containing only 20 compounds inherently
anticipated a claimed species within the genus because “one
skilled in the art would . . . envisage each member” of the
genus. In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280
(CCPA 1962).
b. Express Teachings
If the prior art reference expressly teaches a particular
reason to select the claimed species or subgenus, an examiner
should point out the express disclosure which would have
motivated one of the ordinary skill in the art to select the
claimed invention. See, e.g., Merck & Co. v. Biocraft Labs.,
874 F.2d 804, 807, 10 USPQ 2d 1843, 1846 (Fed. Cir.), cert.
denied, 493 U.S. 975 (1989).
c. Teachings of Structural Similarity
Consider any teachings of a “typical,” “preferred,” or
“optimum” species or subgenus within the disclosed genus. If
such a species or subgenus is structurally similar to that
claimed, its disclosure may motivate one of skill in the art to
choose the claimed species or subgenus from the genus. See,
e.g., Dillon, 919 F.2d at 696, 16 USPQ2d at 1904.
Similarly, consider any teaching or suggestion in the
reference of a preferred species or subgenus that is
significantly different in structure from the claimed species or
subgenus. Such a teaching may weigh against selecting the
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