Appeal 2007-1621
Application 10/721,839
applies when the reviewing court must confine its review of agency
factfinding to the record produced by the agency proceeding.”). It does not
apply to review of an Examiner’s rejection by this board. “[T]he conclusion
of obviousness vel non is based on the preponderance of evidence and
argument in the record.” Id. at 1446, 24 USPQ2d at 1445. See also In re
Kahn, 441 F.3d 977, 989, 78 USPQ2d 1329, 1338 (“[T]he Board need only
establish motivation to combine by a preponderance of the evidence to make
its prima facie case.”). In practical effect, this review is less deferential to
the Examiner than the standard urged by Appellants: any decision that is
supported by a preponderance of the evidence is also supported by
substantial evidence.
Appellants argue that, because Lehrer discloses that retrocyclins are a
combination of two nonapeptides selected from a list of 46 nonapeptides
(SEQ ID NOS: 19-64), Lehrer discloses a genus having 46 X 46, or 2116
members (Br. 4). Appellants argue that the Examiner “has found, using
appellants’ claims as a searching point, that SEQ ID NOS:31 and 32 can be
identified as members of the 2000+ peptide genus described by Lehrer, and
appellants do not disagree. However, this is far short of what is needed to
find obviousness in this situation” (id.). Appellants argue that “the question
boils down to whether one of ordinary skill in the relevant art would have
been motivated to select the claimed species from the prior art genus” (id. at
7; see also Reply Br. 5).
Appellants argue that, in determining whether a prior art genus
renders a species claim obvious, the size of the genus “is a relevant factor,
with the larger the genus and the smaller the selection arguing in favor of
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