Appeal No. 2006-0391
Application No. 10/366,371
the applied prior art, or knowledge generally available [in the art] would have led
one of ordinary skill in the art to combine the references to arrive at the claimed
invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, we find that the claims are directed to a subgenus of compounds,
which the examiner alleges is embraced by the genus of compounds taught by
Nojima. However, the fact that the claimed compound may be encompassed by
the prior art genus does not, by itself, render said compound obvious. In re
Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994); In re Jones,
958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). According to the
examiner, one must first select an oxyalkylenated silicone substituted at the α
and ω positions from the polyoxyalkylene-modified organopolysiloxanes set forth
in column 2 of Nojima and then select a silicone oil from the possible solid, semi-
solid and liquid oils set forth in column 3 (lines 38-63), to produce one of the
claimed compositions. Thus, by picking and choosing, amongst the genus of
compounds disclosed by Nojima, one of ordinary skill in the art might eventually
arrive at a compound within the scope of the claims. We do not agree with this
reasoning. In view of the large number of variables taught by the applied prior
art, we find that it is necessary for Nojima to provide some suggestion or
motivation to make the claimed species or subgenus in order to render the
claimed invention obvious. In re Baird, 16 F.3d at 382. No such teachings have
been pointed out by the examiner. Accordingly, given the myriad of possible
compounds taught by Nojima, and the lack of any suggestion to select the
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