Appeal No. 2001-2633 Page ~ PAGE ~4~
Application No. 07/323,182
establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382, 29
USPQ2d 1550, 1552 (Fed. Cir. 1994) (“The fact that a claimed compound may
be encompassed by a disclosed generic formula does not by itself render that
compound obvious.”); In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943
(Fed. Cir. 1992) (Federal Circuit has “decline[d] to extract from Merck[ & Co. v.
Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989)] the
rule that ... regardless of how broad, a disclosure of a chemical genus renders
obvious any species that happens to fall within it.”). See also In re Deuel, 51 F.3d
1552, 1559, 34 USPQ2d 1210, 1215 (Fed. Cir. 1995).
To the contrary, in order to establish a prima facie case of obviousness in
a genus-species situation, as in any other 35 U.S.C. § 103 case, it is essential
that examiner find some motivation or suggestion to make the claimed invention
in light of the prior art teachings. See, e.g., In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1996) (the mere possibility that the prior art could
be modified such that it would lead to the claimed invention does not make the
claimed process obvious unless the prior art suggested the desirability of such a
modification); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991) (“[A] proper analysis under § 103 requires, inter alia, consideration of …
whether the prior art would have suggested to those of ordinary skill in the art
that they should make the claimed composition or device, or carry out the
claimed process.”).
On this record the examiner fails to provide any evidence that the prior art
would have directed a person of ordinary skill in the art at the time the invention
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007