Appeal No. 2006-2573
Application No. 10/192,055
DISCUSSION
Kasahara is relied upon for teaching “a generic group of compounds
which embraces applicant’s instantly claimed compounds” (Answer 3). The
examiner points to formula (I) on page II of Kasahara wherein B is Cr1r2,
wherein r1 and r2 together represent cyclopropanol; and A is an aryl or
heteroaryl group. Id. The examiner also points to compound II-36 in Table
2.
The examiner concludes:
It would have been obvious to one having ordinary skill
in the art at the time of the invention to select any of the species
of the genus taught by the reference, including those instantly
claimed, because the skilled chemist would have the reasonable
expectation that any of the species of the genus would have
similar properties and, thus, the same use as taught for the
reference genus as a whole i.e., as fungicidal agents. In other
words, one of ordinary skill in the art needs to make only one
modification to the reference disclosed compound and arrive at
a compound included in the instant claim.
One of ordinary skill in the art would have been
motivated to select the claimed compounds from the genus in
the reference since such compounds would have been suggested
by the reference as a whole. It has been held that a prior art
disclosed genus of useful compounds is sufficient to render
prima facie obvious a species falling within a genus. In re Susi,
440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by
the Federal Circuit in Merck & Co. v. Biocraft Laboratories,
847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989). The
reference also teaches formulations comprising the reference
compound and water, vegetable oil, etc. as carriers (see page 44
of the English translation of the document). The instantly
claimed composition of claims 1 and 2 differs by including a
compound, which is structurally analogous to the reference
disclosed compound and thus, provides motivation to one of
ordinary skill in the art to prepare the structural variants of the
2
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