Appeal No. 2003-0944 Page 3
Application No. 09/577,955
1992). The examiner acknowledges that Carr does not describe “combinations of
isoleucine and lysine[ ] in a specific example” (Answer, page 4), but concludes that “it
would have been obvious to one of ordinary skill in the art to use isoleucine or lysine or
combinations thereof in a shampoo or conditioner because the reference teaches these
amino acids to be preferred embodiments, included in a list of only nine amino acids”
(id.). Appellant, on the other hand, argues that “the present invention is [one] of
selection,” and “it would not have been obvious to one of ordinary skill in the art to
arrive at compositions having the recited amino acids merely because there is
contained within [Carr] a list of only nine amino acids” (Brief, page 12).
We cannot subscribe to appellant’s position. Certainly it has been held that “[a]
disclosure of millions of compounds does not render obvious a claim to three
compounds, particularly when that disclosure indicates a preference leading away from
the claimed compounds[,]” In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1150, 1552 (Fed.
Cir. 1994), but that is not the situation here. The number of possible combinations of
the nine amino acids preferred by Carr is not particularly large, nor is there anything in
the reference to indicate a preference leading away from a combination of isoleucine
and lysine. The mere fact that Carr discloses a genus of hair treatment compositions
(which undeniably embraces the hair treatment composition required by the claims)
without particularly specifying the required composition, does not make any one of the
compositions less obvious than any other, especially here, where the possibilities are
relatively limited. See Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1846 (Fed. Cir. 1989), wherein it was held that disclosure of “a
multitude of effective combinations” (approximately 1200) “does not render any
particular combination less obvious . . . especially . . . [where] the claimed composition
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