Appeal No. 2003-0862
Application No. 09/518,032
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
Appellants argue that Murray discloses a number of possible conditioning agents
with millions of possibilities. Brief, page 12. Appellants argue that nothing in Murray
specifically points to the combination of high volatile silicone, low volatile silicone and
amino functionalized silicone. Brief, page 13. Appellants cite In re Baird, 16 F.3d 380,
382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) in support of the position that a reference
which discloses a vast number of compounds encompassed by a generic formula does
not render obvious a claim to three compounds “particularly when that disclosure
indicates a preference leading away from the claimed compounds.” Brief, page 14.
In Baird, a generic diphenol formula of a reference patent encompassed the
bisphenol A of the claimed invention. In that set of facts, the Baird court found that the
fact that a claimed compound may be encompassed by a disclosed generic formula
does not by itself render that compound obvious. In Baird the prior art indicated a
preference for derivatives of bisphenol A. The court in Baird referenced In re Jones,
958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). Jones involved an
obviousness rejection of a claim to a specific compound, the 2-(2 '-aminoethoxy)
ethanol salt of 2-methoxy-3,6-dichloroben-zoic acid (dicamba), finding the compound
obvious in view of a prior art reference disclosing a genus which admittedly
encompassed the claimed salt. The court reasoned that the prior art reference
encompassed a "potentially infinite genus" of salts of dicamba and listed several such
salts, but that it did not disclose or suggest the specifically claimed salt. Id. Neither of
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