Appellant loses in Ex parte Gervais
The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Once a prima facie case of obviousness has been established, evidence in support of unexpected properties may be provided by appellant; however, “[when an] advantage is not disclosed in appellant’s application” he is “not in a favorable position to urge it as a basis for the allowance of claims” In re Herr, 50 CCPA 705, 709 (1962) citing In re Lundberg, 45 CCPA 838 (1958). Further, evidence of undisclosed advantages must “‘inherently flow’ from what was disclosed in the specification” In re Davies, 475 F.2d 667, 670 (1973) citing In re Zenitz, 53 CCPA 746 (1964).
Genus/species issues were discussed:
Appellants argue “In re Baird"4 is dispositive of the no prima facie obviousness issue” where “the Federal Circuit held that the mere fact that a genus encompasses claimed subject matter is not sufficient to establish prima facie obviousness.” Appellants contend In re Baird is similar to the Examiner’s position in the case at hand.
We are not persuaded. In Baird, the Federal Circuit found that the generic formula encompassed “more than 100 million different diphenols, only one of which is bisphenol A [the compound at issue].” Baird, 16 F.3d at 382. In Baird, there was no direction to the specific compound, much less any indication that the specific compound at issue would function.
By contrast, the case at hand presents a very different situation where Kisilevsky specifically identifies the 3-amino-1-propanesulfonic acid as an exemplary compound which is taught to treat amyloid deposition (FF 1-4). See Perricone v. Medicis Pharm. Corp. 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court rejects the notion that one of [14 listed] ingredients cannot anticipate because it appears without special emphasis in a longer list.”); see also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of a multitude of combinations failed to render any particular formulation less obvious).
In the instant case, the rejection is obviousness, not anticipation, so it is only necessary that the teaching of Kisilevsky render obvious the use of 3- amino-1-propanesulfonic acid as an exemplary compound which is taught to treat amyloid deposition (FF 1-5). In Gleave, the Federal Circuit expressly addressed the issue of lists of large numbers of compounds, where the “list includes more than 1400 sequences.” In re Gleave, 560 F.3d 1331, 1333 (Fed. Cir. 2009). The Court, found that “Wraight expressly lists every possible fifteen-base-long oligodeoxynucleotide sequence in IGFBP-2, and under our precedent, this list anticipates Gleave’s claims.” Id. at 1338.