Appeal 2006-3020
Application 10/109,374
“‘The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact.’ In re Gartside,
203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) . . . , as is the
presence or absence of a ‘reasonable expectation of success’ from making
such a combination . . . .” Alza, 464 F.3d at 1289, 80 USPQ2d at 1003.
DISCUSSION
The First Issue: 35 U.S.C. § 112, ¶ 1
We find the Specification supports the genus of claim 39, including
the aryl and heteroaryl alkyl ether moieties. As filed, the Specification
disclosed the genus of originally-filed claim 1, i.e., a “reagent capable of
direct transformation into a radiopharmaceutical having a binding affinity
for the LTB4 receptor of less than 1000 nM.” Also, as filed, the
Specification disclosed a large number of specific examples of reagents with
a “receptor binding moiety comprising an aryl or heteroaryl alkyl ether.”
Contrary to the Examiner’s position that the claimed genus is “almost
unlimited” in size (Answer 4), claim 39 is limited to reagents that bind to the
LTB4 receptor and have “an aryl or heteroaryl alkyl ether” group.
We agree with the Examiner that disclosure of a “number of species”
does not always support a genus (Answer 4), particularly in an unpredictable
art. However, in this case, the extensive disclosure of species within
Appellants’ claimed genus provides sufficient support for the scope of claim
39. Thus, based on Appellants’ disclosure, a skilled artisan would recognize
the inventors had possession of the claimed subject matter at the time the
application was filed. Based on our findings and reasoning above, we
reverse the § 112, ¶ 1 rejection.
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013