Appeal 2007-1621
Application 10/721,839
not disclose, or even suggest the claimed compound. See also, In re Bell,
991 F.2d 781, 784, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (species claim
held unobvious over genus encompassing “more than 1036 different
nucleotide sequences”); In re Deuel 51 F.3d 1552, 1558, 34 USPQ2d 1210,
1215 (Fed. Cir. 1995) (species claim held unobvious over genus
encompassing “an enormous number of DNA sequences”).
Rather than requiring the artisan of ordinary skill to select from a
genus having many millions of possible choices, Lehrer only requires the
practitioner to choose a first nonapeptide from among 46 possibilities, and a
second nonapeptide from the same list of 46 members. Thus, the situation
faced by the artisan of ordinary skill practicing Lehrer’s disclosure is not
analogous to that in Jones, Baird, Bell, and Deuel, in which species claims
were held unobvious over huge genera. Rather, because preparing antiviral
retrocyclins according to Lehrer’s disclosure requires selecting only two
nonapeptides from a list of 46, in our view, the instant situation is more
similar to that of Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989).
In Merck, the court held a species claim obvious over a reference
disclosing over 1200 possible combinations of two ingredient types useful in
diuretic compositions, where the claimed combination was one of those
disclosed. Id. at 806-807, 10 USPQ2d at 1845-1846. Neither of the claimed
ingredients was listed by the reference as being preferred. Id. The court
nonetheless held the claims to be obvious in view of the reference’s explicit
teaching that any one of the claimed compositions would produce a diuretic
composition having desirable properties. Id. at 807, 10 USPQ2d at 1845-
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