Appeal No. 2006-2369 Page 17
Application No. 10/169,618
‘775 suggest the preparation of the claimed polysaccharide urethane derivative, using
the claimed process steps. The fact that the prior art suggests the preparation of the
urethane derivative for a purpose or end use different from Appellants’ does not mean
that the claimed urethane derivative and its method of making is any less obvious. See
id.
Appellants also argue that the obviousness rejection of product claims 1-7, 9,
11-13, and 15-33 is contrary to the Manual of Patent Examining Procedures (MPEP)
§ 2144.08. Brief, pages 11-12. Specifically, Appellants point out that “[t]he fact that a
claimed species or subgenus is encompassed by a prior art genus is not sufficient by
itself to establish a prima facie case of obviousness.” Id., at page 11 (citing In re Baird,
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) and In re Jones, 958 F.2d
347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992)). Thus, urge Appellants, “[t]o
establish a prima facie case of obviousness in a genus-species chemical composition
situation, as in any other 35 U.S.C. § 103 case, it is essential that the Examiner find
some motivation or suggestion to make the claimed invention in light of the prior art
teachings.” Id. (citing In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1996)). Furthermore, urge Appellants, contrary to the requirements in MPEP
§ 2144.08, the rejection does not properly compare the generic disclosure in the prior
art to the claimed species or subgenus. Id., at page 12.
We do not agree that the examiner’s obviousness rejection of claims 9 and 14 is
contrary to the MPEP § 2144.08 and the cases cited therein, specifically In re Baird,
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