Appeal No. 2005-2463
Application No. 10/235,443
question inasmuch as a rejection under 35 U.S.C. § 102(e)/103 may
be appropriate upon further prosecution.
According to the examiner, a question of obviousness arises
(within the meaning of 35 U.S.C. § 103) because the claims of
Bennett embrace a species of the generic claims of the instant
application. Appellants disagree to the extent that appellants
characterize Bennett’s claims as embracing a genus of compounds of
which the presently claimed compounds are a relatively small
subgenus. Even if we accept the appellants’ characterization,
which appears to be the more accurate view of the relationship
between the instant claims and those of Bennett, a subgenus of
compounds is ordinarily considered to be prima facie obvious from a
prior art genus in the absence of a showing of unexpected results.
Here, appellants do not dispute that Bennett gives rise to a
prima facie case of obviousness. Rather, appellants argue that any
presumption of obviousness is rebutted by the allegation that the
presently claimed subgenus of compounds possess the unexpected
property of catalyzing the oligomerization of ethylene to form
relatively pure alpha-olefins. Yet, appellants point to no
objective evidence in the record, such as a comparative showing, to
substantiate the allegation. Thus, Bennett gives rise to a prima
facie case of obviousness which is not rebutted by any evidence of
unexpected results.
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