Appeal No. 2006-2573
Application No. 10/192,055
reference compounds and the formulations thereof. The
preamble is not given any patentable weight as it merely recites
an intended use.
Id. at 4-5.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). The test of
obviousness is “whether the teachings of the prior art, taken as a whole,
would have made obvious the claimed invention.” In re Gorman, 933 F.2d
982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Appellants argue that of all of the 338 compounds exemplified by
Kasahara, only a single species, II-36, as the r1 and r2 forming the
cyclopropyl, and that species has been removed from claim 1 by proviso (Br.
9). Appellants assert “there is no overlap, and so no prima facie case of
obviousness was made.” Id. Thus, in order to arrive at the claimed
compounds, appellants assert that “[a] large number a variables must be
selected or modified with no guidance from the reference.” Id. We do not
find Appellants’ arguments to be convincing, and the rejection is affirmed.
Appellants are claiming a large genus of compounds, which appears
to be a subgenus of the larger prior art genus of Kasahara. Kasahara
specifically disclosed only one species, compound II-36, that fell within
Appellants’ genus, and disclosed that it has fungicidal activity against apple
scab (Example 6, page 73, Table 15, page 76).
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