Appeal No. 2001-1221 Page 3
Application No. 08/442,957
situation wherein the CCPA held >Property of an end product may, under appropriate
circumstances, be considered in the determination of the non-obviousness of the
claimed intermediate.=@ Brief, page 6. The examiner responds that appellants have not
shown Athat the claimed compounds, which are intermediates to patented compounds
having antiproliferative activity, have any [sic, no?] known utility other than as
intermediates, and that appellants Ahave not demonstrated, through direct comparison,
that the claimed compounds possess unexpectedly superior antiglucocorticoid,
antigestagenic and/or antiprogestiometic properties to the closest prior art compound.@
Examiner=s Answer, page 7.
In our view, these arguments are premature, as we find that the examiner=s initial
burden of establishing a prima facie case of obviousness for the claimed invention has
not been met.
The examiner=s position appears to be, quite simply, that each and every
species encompassed by the references would have been obvious per se. While the
proposition that Athere is nothing unobvious in choosing >some= among >many=
indiscriminately@ has a certain appeal, In re Lemin, 332 F.2d 839, 841, 141 USPQ 814,
815 (CCPA 1964), our reviewing court has repeatedly indicated, in these or similar
words, that Areliance on per se rules of obviousness is legally incorrect and . . . is simply
inconsistent with section 103.@ In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127,
1133 (Fed. Cir. 1995); see also In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663,
1666 (Fed. Cir. 1996). Moreover, A[t]he fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself render that compound
obvious.@ In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
Several considerations are relevant to the determination of whether a species or
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