Appeal No. 1999-2347
Application 08/892,560
a metal plug based on general knowledge in the art and on Wolf.
Balda, of record, also shows forming multiple layers.
We conclude that Woo's claim 1 would have been obvious over
Appellants' claim 21 taken together with Wolf and Balda.
Appellants argue that the present application presents genus
claims with Woo being the species claims and, under Manual of
Patent Examining Procedure (MPEP) § 715.03, Appellants have
established possession of the generic invention prior to the
effective date of the reference and are entitled to swear back of
Woo (Br10). Appellants' relationship to Woo is more properly
characterized as subcombination/combination rather than a
chemical genus/species. Nevertheless, MPEP § 715.03 is directed
to chemical genus/species relationship situations where
predictability is in question, i.e., where the species may not be
obvious over the genus. Cf. In re Baird, 16 F.3d 380, 382,
29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (disclosure of a chemical
genus does not by itself render obvious any species that happens
to fall within it). Here, there are no chemical reactions and no
questions of predictability. In addition, MPEP § 715.03 does not
relate to the situation where an applicant is claiming the same
patentable invention, as defined in 37 CFR § 1.601(n), as the
prior art reference. Section 715.03 provides guidance as to
sufficient showings where the rejection is not based upon a U.S.
patent which claims the same invention as claimed by the
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