Appeal No. 1999-1472 Page 6
Application No. 08/591,767
claims. But that is not the la w. As stated in In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995), the use of per se rules flouts section 103 and the
fundamental case law applying it. Per se rules that eliminate the need for fact-specific
analysis of claims and prior art may be administratively convenient, but reliance on per
se rules of obviousness is legally incorrect and must cease. See In re Baird, 16 F.3d
380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (that a claimed compound may be
encompassed by a disclosed generic formula does not by itself render that compound
obvious); and In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992)
(we decline to extract from Merck [Merck & Co. v. Biocraft Labs., 874 F.2d 804, 806-09,
10 USPQ2d 1843, 1845-48 (Fed. Cir. 1989)] the rule that the solicitor appears to
suggest-that regardless of how broad, a disclosure of a chemical genus renders obvious
any species that happens to fall within it).
Nor has the examiner established that the Hale patent contains guidelines or a
pattern of preferences which would have led a person having ordinary skill in the art to
the specific subject matter recited in claims 1 through 15. We agree with applicant and
the examiner that Hale's prodrug 2.2 listed in Table 3 (column 37) appears to constitute
the closest exemplified prior art compound. That prodrug, however, contains a charged
chemical modifier as do most of the compounds disclosed by Hale. Simply stated, the
examiner has not explained how a person having ordinary skill in the art would have
been led from "here to there," i.e., from the testosterone prodrugs disclosed by Hale to
the specific subgenus of testosterone analogs recited in the claims on appeal.
Further respecting claims 7 through 15, we find that Hale discloses transdermal
delivery of testosterone prodrugs; that transdermal administration and intranasal
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