Appeal 2006-2468
Application 10/149,875
claim requirements and then perform routine experimentation to determine
the workable or optimum amount for that particular PFAP. The amount of
picking and choosing required, while permissible in the context of
obviousness, is not permissible in the context of anticipation.
We note that Seiden discloses a large genus of compounds and that
the claims are directed to subgenera within that larger genus. This is not a
case in which a one-to-one comparison between the preferred ranges of
Seiden and the claimed ranges can be relied upon as the sole basis for
finding anticipation.
We also note, as does our dissenting colleague, that an anticipation
rejection “cannot be overcome by evidence of unexpected results or
teachings away in the art.” See In re Malagari, 499 F.2d at 1302,
182 U.S.P.Q. at 553. We question whether it is appropriate under the facts
of this case to completely foreclose this avenue of proof when it is well
settled that a proper showing of unexpected results would overcome a
rejection under 35 U.S.C. § 103. Id.; see also Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 U.S.P.Q. 459, 467 (1966); In re Woodruff, 919 F.2d
1575, 1578, 16 U.S.P.Q.2d 1934, 1936-37 (Fed. Cir. 1990).
We find that the Examiner has failed to establish that the subject
matter of claims 1-6, 8-22, 25-40, 42-60, and 62-69 is anticipated by Seiden.
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