Appeal No. 2000-0022
Application No. 08/888,173
from Kautsky. That is, Kautsky’s generic formula, set forth in
the paragraph bridging column 1 and 2, requires 3 nitrogen atoms
in combination with the alkylene groups.
With regard to claims 18 and 19, we note that the
requirements of each of these claims is excluded from Kautsky,
that is, Kautsky requires that at least one of the moieties
contains an R of at least 6 carbon atoms. Appellants’ claims 18
and 19 exclude such a requirement.
We further find that the examiner did not make findings as
to the aforementioned items that should be considered in making
out a prima facie case. These items are: (a) size of the genus;
(b) express teachings; (c) teachings of structural similarity;
(d) teachings of similar properties or uses, and (e)
predictability of the technology. Rather, the examiner seized
on Kautsky’s teaching of a genus which embraces appellants’
subgenus and, apparently applied a per se rule of obviousness.
On the other hand, appellants did discuss items (a) and
(c), in a manner favoring unobviousness of their claimed
invention.
In view of the above, we find that the examiner has not
shown that one of ordinary skill in the art would have selected
the compounds recited in appellants’ claim 13 in view of the
teachings of Kautsky, absent hindsight. Hence, we determine
that the examiner has not set forth a prima facie case. We
therefore reverse the rejection.
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