Appeal No. 2006-2817 Page 8
Application No. 10/734,979
1994), a case involving the obviousness of a single species in view of a generic
disclosure in a single reference, the court explained that the “specific disclosure [of an
anticipatory species], even in a list, makes this case different from cases involving
disclosure of a broad genus without reference to the potentially anticipating species.”
Id. We think this rationale is applicable to the obvious determination at issue here,
where there is a specific disclosure of a species within the claimed Formula I genus.
Having determined that the claimed method steps (b)-(e) would have been
obvious, Jacobs’ description of at least two species within the genus recited in claim
1(a) is sufficient in this case to establish prima facie obviousness of the claimed
method. Contrary to Appellants’ argument, it is not necessary that the entire claimed
subgenus be suggested, when specific species of it are described in the prior art. Brief,
page 5 (“[T]he Sadvary publication does not suggest the subgroup of Applicants’
invention.”). What Appellants have ignored is that the combination of prior art cited in
the rejection is adequate to establish that two embodiments of the claimed method are
obvious, i.e., methods of using the triphenyl and triethylhexyl compounds described by
Jacobs, and incorporated by reference into Sadvary.
A method claim is unpatentable under § 103 if any scope of it would have been
obvious to the person of ordinary skill in the art at the time the invention was made. In a
case involving the obviousness of a claim in a design patent, the Federal Circuit held
that where it had been determined that a single claim covered plural embodiments, a
Ҥ 103 rejection is proper if the prior art demonstrates the obviousness of any one of
them.” In re Klein, 987 F.2d 1569, 1570, 26 USPQ2d 1133, 1134 (Fed. Cir. 1993).
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