Appeal No. 2001-1221 Page 4
Application No. 08/442,957
subgenus would have been obvious over a description of a genus encompassing the
species or subgenus. Merely by way of example, the size of a genus relative to a
claimed species or subgenus may have a bearing on the determination. A very broad
genus, without more, may weigh against a determination that a species or relatively
narrow subgenus is obvious over the genus; even a relatively small genus does not
create an automatic presumption of obviousness - there must still be some reason,
stemming from the prior art, to select the claimed species or subgenus, see, e.g., In re
Baird, 16 F.3d at 382, 29 USPQ2d at 1552; In re Jones, 958 F.2d 347, 350, 21
USPQ2d 1941, 1943-44 (Fed. Cir. 1992), (although, a very small genus may actually
anticipate each member of the genus, see In re Petering, 301 F.2d 676, 682, 133
USPQ 275, 280 (CCPA 1962)).
A related consideration is whether the prior art highlights any Atypical,@
Apreferred,@ or Aoptimum@ species within the genus. Highlighted species different from
those claimed may weigh against a determination of obviousness. In re Baird, 16 F.3d
at 382, 29 USPQ2d at 1552. On the other hand, typical, preferred, or optimum species
structurally similar to those claimed may be evidence supporting a determination of
obviousness. In re Dillon, 919 F.2d 688, 696, 16 USPQ2d 1897, 1904 (Fed. Cir. 1990).
Yet another consideration is the disclosure of any useful properties of the prior
art compounds. A[T]he lack of any disclosure of useful properties may indicate a lack of
motivation to make related compounds,@ or, more to the point here, a lack of motivation
to select a species or subgenus from a disclosed genus, weighing against a
determination of obviousness. See In re Dillon, 919 F.2d at 698, 16 USPQ2d at 1906.
With the exception of asserting that Aany of the species of the genus would have
similar properties@ as the prior art genus, the examiner has addressed none of these
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