Appeal 2006-2350
Application 10/444,104
disclosure of the reference suggesting the selection of chemical groups
leading to bisphenol A). Generally, prima facie obviousness requires that
there be some direction in the prior art indicating which of the species within
the disclosed genus will provide the desired properties, the species cannot
merely be “obvious to try.” See Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d at 807, 10 USPQ2d at 1845 (“An invention is ‘obvious to try’
‘where the prior art [gives] either no indication of which parameters [are]
critical or no direction as to which of many possible choices is likely to be
successful.’” citing In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988)).
In the present case, in order to establish prima facie obviousness more
is required than just a statement that calcium carbonate is within the
calcium-containing compound genus of Uchino 978. This is because Uchino
978 provides no guidance as to how to select the calcium-containing
compound, and the selection criteria is not readily apparent from the
calcium-containing compounds exemplified. The examiner must provide
some evidence or reasoning indicating that the claimed species, calcium
carbonate, would have been an obvious selection to one of ordinary skill in
the art. This teaching, for instance, could come from what is known in the
art about the particular calcium compounds used as anti-solidification agents
in Uchino 978 (Uchino 978, e.g.,[0015]). We do not find such evidence or
reasoning in the record.
We conclude that the Examiner failed to establish a prima facie case
of obviousness with respect to the subject matter of claim 29.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013