Appeal 2006-3252
Application 09/536,728
1 Johnston, 425 U.S. 219, 229 (1976) and Graham v. John Deere Co., 383
2 U.S. 1, 35 (1966).
3 The prior panel decision
4 Esser maintains, and the prior panel found, that there would have been
5 no reason to modify the Olson compounds to come up with the now claimed
6 Esser compounds. Both Esser and the prior panel believe that the mere fact
7 that the now claimed Esser compounds are a "subgenus" of the "genus" of
8 compounds described by Olson does not, by itself, establish obviousness.
9 The panel, but not Esser, cited and relied on In re Baird, 16 F.3d 380, 382
10 (Fed. Cir. 1994). According to the panel, (1) one must first select the
11 compound of Olson Example 14 and then (2) pick and choose from the
12 possible R groups listed in col. 3 of Olson to come up with Esser's claimed
13 compounds. Consistent with KSR principles applicable to the obviousness
14 inquiry, we believe a focus on "selecting" and "picking and choosing" is too
15 narrow and represents a "rigid approach" to resolving obviousness which
16 KSR tells us we are to avoid.
17 We need not decide in resolving the rejection based on Olson whether
18 Baird survived KSR. Even if one can assume arguendo that Baird remains
19 viable, Baird is not applicable here.
20 The panel, and presumably Esser, apparently had some difficulty with
21 why one skilled in the art would "first select" the compound of Example 14
22 of Olson. The proper question is: Why would a person skilled in the art not
23 select any of the options offered up by Olson? Olson describes in Example
24 14 a compound useful for Olson's purpose and therefore one skilled in the
25 art is free to "select" the compound of Example 14 whether it is the "first",
27
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