Appeal No. 2006-2369 Page 18
Application No. 10/169,618
16 F.3d 380, 29 USPQ2d 1550, and In re Jones, 958 F.2d 347, 21 USPQ2d 1941. In
our view, the facts before us are readily distinguishable from the situations presented in
those cases.
Specifically, in In re Jones the court considered the obviousness of a claimed
compound that was encompassed by a prior art reference’s broad generic disclosure.
Jones, 958 F.2d at 349-350, 21 USPQ2d at 1943. Pointing out that the genus disclosed
in the primary reference was “potentially infinite,” and that the claimed compound
contained significant structural differences when compared to the primary reference, the
court reasoned that the claimed compound could not be considered obvious without
some “suggestion . . ., found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art” for combining the cited references
to arrive at the claimed compound. Id., at 350-351, 21 USPQ2d at 1943-44. Similarly,
the court in In re Baird, citing Jones, held a claim reciting a bisphenol A polyester
nonobvious over prior art disclosing a generic formula encompassing “more than 100
million different diphenols[,]” where the reference’s disclosure of fifteen preferred
compounds did not disclose, or even suggest bisphenol A. Baird, 16 F.3d at 382,
29 USPQ2d at 1552.
Contrary to the situations in Jones and Baird, Sony ‘649 and Sony ‘775 disclose
limited genera and provide guidance that would have led the skilled artisan to the
species recited in the instant claims. As pointed out above, paragraph [0007] of Sony
‘649 discloses that, when using a polysaccharide hydrolysate as the carbohydrate
moiety of the disclosed urethane derivatives, one may select from three specifically
named candidates -- cellulose, pullulan and starch -- with hydrolysates of “seven or
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