Appeal No. 2000-0022
Application No. 08/888,173
claimed species or subgenus and thus against a determination of
obviousness. Baird, 16 F.3d at 382-83, 29 USPQ2d at 1552.
d. Teachings of Similar Properties or Uses
Consider the properties and utilities of the structurally
similar prior art species or subgenus. It is the properties and
utilities that provide real world motivation for a researcher to
make species structurally similar to those in the prior art.
Conversely, lack of any known useful properties weighs against a
finding of motivation to make or select a species or subgenus.
However, the prior art need not disclose a newly discovered
property in order for there to be a prima facie case of
obviousness. If structurally similar prior art species and that
claimed share a useful property, that will generally be
sufficient to motivate a skilled artisan to make the claimed
species. For example, based on a finding that a tri-ortho ester
and a tetra-ortho ester behave similarly in certain chemical
reactions, it has been held that one of ordinary skill in the
relevant art would have been motivated to select either
structure. Dillon, 919 F.2d at 692, 16 USPQ2d at 1901. In
fact, similar properties may normally be presumed when compounds
are very close in structure. Thus, evidence of similar
properties weighs in favor of a conclusion that the claimed
invention would have been obvious.
e. Predictability of the Technology
Consider the predictability of the technology. If the
technology is unpredictable, it is less likely that structurally
similar species will render a claimed species obvious because it
may not be reasonable to infer that they would share similar
properties. However, obviousness does not require absolute
predictability, only a reasonable expectation of success, i.e.,
a reasonable expectation of obtaining similar properties. See,
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