Appeal No. 2005-0978
Application No. 09/983,232
We agree with appellants that the examiner has failed to establish a prima facie
case of obviousness on the facts before us. It is well settled that the “fact that a claimed
compound and/or subgenus may be encompassed by a disclosed generic formula does
not by itself render that compound or subgenus obvious”. In re Baird, 16 F.3d 380, 29
USPQ2d 1550 (Fed. Cir. 1994). 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. The court
in Baird also cited 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-dichlorobenzoic acid (dicamba), as
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 claimed salt.
In our view, the examiner has not established by a preponderance of the
evidence why one of ordinary skill in the art, with knowledge of Pettersen, would have
been motivated to select the particular substituents required for Formula IIA of claim 54.
We agree with appellants that the examiner has failed to establish a prima facie case of
obviousness on the facts before us.
In view of the above, the rejection of claims 54-56 under 35 U.S.C. §103(a), as
unpatentable over Petterson is reversed.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007