Interference 103,781
May 3, 1995, or Claims 13-14 of Adang’s U.S. Patent 5,380,831,
would have been obvious in view of any other claim designated as
corresponding to Count 2, with or without the combined teachings
of all the prior art of record, is a question of law.
Fischhoff argues that there is no “motivation or suggestion
to make the particular species from the teaching of the genus”
(Paper No. 224, para. bridging pp. 10-11). We do not agree
that there is no motivation or suggestion to make and use the
particular species claimed by Fischhoff and by Adang. The
motivation or suggestion to make and use a chemical species
defined in terms of chemical structure, formula, name or
properties need not be explicit. The motivation or suggestion to
make and use a particular chemical species may be implicit from a
prior art genus of definitive scope. For example, In re Payne,
606 F.2d 303, 203 USPQ 245 (CCPA 1979), teaches at 314, 203 USPQ
at 255:
When prior art compounds essentially “bracketing” the
claimed compounds in structural similarity are all known
as pesticides, one of ordinary skill in the art would
clearly be motivated to make those claimed compounds in
searching for new pesticides.
Here, one might reasonably conclude that a person having ordinary
skill in the art would have been “motivated” to make and use the
particular species claimed by Fischhoff or Adang by the desire to
(1) reduce the number of polyadenylation and ATTTA sequences in
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