Appeal No. 2005-0393
Application 09/536,728
which corresponds to R6 is ethyl rather than methyl, n-propyl or isopropyl. Id., p. 4. The
examiner points out that Olson discloses that said groups are interchangeable. Id.
Thus, the examiner argues that it would have been obvious to one having ordinary skill
in the art to make the compounds set forth in claims 21 and 39 with the expectation that
said compounds would be useful for the same purpose as the compounds taught by the
prior art. Id.
In response, the appellants contend that (1) Olson is non-analogous art because
the compounds taught therein are used in feed to delay the onset of egg production in
chickens; (2) there is no suggestion to modify the compounds taught by Olson; and
(3) one of ordinary skill in the art had no reasonable expectation of successfully
obtaining the claimed compounds by modifying the compounds taught in Olson. Brief,
pp. 5-8.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984).
Here, we find that representative claims 21 and 39 are directed to a subgenus of
compounds, which the examiner alleges is embraced by the genus of compounds
taught by Olson. However, the fact that the claimed compound may be encompassed
by the prior art genus does not, by itself, render the claimed compound obvious. In re
Baird, 16 F.3d 380, 382, 29 USPQ2d 1550,1552 (Fed. Cir. 1994); In re Jones, 958 F.2d
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