Determination of Obviousness

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• Determination of Obviousness
• Practice Under the Genus-Species Guidelines
• and In re Ochiai In re Brouwer
• Sreeni Padmanabhan James Wilson
• Supervisory Patent Examiners
• Art Unit 1617 1624
• March 07, 2006

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Genus-Species Guidelines

• Examination of claims directed to
  sub-genus/species of chemical compounds
• A single prior art reference discloses a genus
  that encompasses the claimed species or subgenus,
  but does not expressly disclose or otherwise
  anticipate the claimed compounds.
• Reproduced in MPEP 2144.08.

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THE GENUS-SPECIES GUIDELINES
Frequently Asked Questions
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• Purpose of Genus-Species Guidelines
• The fact that a claimed species or subgenus is
  encompassed by a prior art genus is not
  sufficient by itself to establish a prima facie
  case of obviousness.
• In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550,
  1552 (Fed. Cir. 1994)
• Patentability is determined in view of the
  totality of the facts.
• There are no per se rules in determining
  obviousness.

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When should the Genus-Species Guidelines be
followed?

• When a single prior art reference discloses a
  genus encompassing the claimed species or
  subgenus wherein the reference does not
  anticipate the claimed species or subgenus
• AND
• The examiner does not find additional prior art
  to show that the differences between the prior
  art primary reference and the claimed invention
  as a whole would have been obvious.

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Examination Steps Prior to Any Obviousness
Analysis

1. The examiner should analyze the claims as a whole
   in light of and consistent with the
   specification.
2. The examiner should conduct a thorough search of
   the prior art and identify relevant prior art
   references.
3. The examiner should then determine whether the
   prior art is anticipatory.

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What happens when a single prior art reference
disclosing a genus encompassing the claimed
species or subgenus is the sole reference
utilizable as non-anticipatory art?
The Examiner should use the Genus-Species
Guidelines to determine whether the claims would
have been prima facie obvious.
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Does a Genus-Species Analysis differ from any
other under 35 U.S.C. 103? No!

• To establish prima facie case of obviousness,
  Examiners utilize the Graham v Deere Analysis.
  103 requirement for nonobviousness is no
  different in chemical cases
• Determine scope and content of the prior art,
• Ascertain the differences between the prior art
  and the claims at issue,
• Determine the level of ordinary skill in the
  pertinent art.

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Genus-Species Guidelines focus on specific
motivational considerations or prior art
suggestions used in determining prima facie
obviousness

• The following key issues are considered relevant
  when making a proper Genus-Species analysis (when
  present)
• Consider the size of the genus
• Consider the express teachings of the reference
• Consider the teachings of structural similarity
• Consider the teachings of similar properties or
  uses
• Consider the predictability of the technology
• Consider any other teaching to support the
  selection of the species or subgenus

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Example 1
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Analysis of Example 1
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Genus-Species Motivation Analysis

1. Are there express teachings that would have
   motivated the selection of the claimed sub-genus?
2. Are there teachings of similar properties or
   uses?
3. Is the art predictable such that similar
   properties or uses would be expected?

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• Determine whether a Prima Facie Case of
  Obviousness Exists Based on Entire Record
  Initially Before PTO
• Consider Graham v Deere Analysis
• Determine Whether There Would Have Been
  Motivation to Select the Claimed Species or
  Subgenus

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Processes Which Employ Nonobvious Products
Considering Ochiai, Brouwer and 103(b)
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Treatment of Product and Process Claims in light
of

• In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed.
  Cir. 1995)
• In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed.
  Cir. 1996)
• 35 U.S.C. 103(b)

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Question?
Can an otherwise conventional process or method
be patented if limited to making or using a
nonobvious product?
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TEST
The collective teachings of the prior art must
have suggested to one of ordinary skill in the
art that, at the time the invention was made,
Applicants claimed invention would have been
obvious.
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Decision

1. Use of per se rules is improper in applying the
   test for obviousness.
2. There was no suggestion or motivation in the
   prior art to make or use non-obvious products.
3. Rejections based upon S103(a) were overturned.

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Impact Upon Examination

• RESTRICTION
• Product(s) Process(es) may still initially be
  restricted in compliance with MPEP 806.05 et seq
  (Related Inventions) and MPEP 808 (Reasons for
  Insisting Upon Restriction).
• Restriction was not an issue before the court in
  the Ochiai and Brouwer cases.
• The propriety of any restriction requirement
  should be reconsidered when all the claims
  directed to the elected invention are in
  condition for allowance.
• See MPEP 821.04 et seq for rejoinder practice.

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Impact Upon Examination

• REJOINDER
• MPEP 821.04(b) Rejoinder of Process Requiring
  an Allowable Product
• Applicant elects a product invention and all
  claims directed thereto are subsequently found
  allowable.
• Withdrawn process claims which depend from or
  otherwise require all the limitations of an
  allowable product claim will be considered for
  rejoinder.
• All claims directed to a nonelected process
  invention must depend from or otherwise require
  all the limitations of an allowable product claim
  for that process invention to be rejoined.

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Impact Upon Examination

• REJOINDER (cont.)
• Upon rejoinder of claims directed to a previously
  nonelected process invention, the restriction
  requirement between the elected product and
  rejoined process(es) will be withdrawn.
• If applicant cancels all the claims directed to a
  nonelected process invention before rejoinder
  occurs, the examiner should not withdraw the
  restriction requirement. This will preserve
  applicants rights under 35 U.S.C. 121.

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Rejoinder Considerations

• Process claims which are not commensurate in
  scope with allowed product will not be rejoined.
• Process(es), if rejoined will be subject to
  examination for patentability in accordance with
  37 CFR 1.104.
• - May have 35 U.S.C. 112 1st or 2nd paragraph
  considerations.
• - Matter(s) of form

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• For Biotechnological Processes only - subsection
  35 USC 103(b)
• Effective Date of Inventions
• Ownership
• Term of Inventions
• Biotechnological Process Definition
• Timely election under provisions as of 103(b).

35 U.S.C. S103(b)
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• Thanks
• Sreeni Padmanabhan
• Contacts at USPTO
• 571-272-0629
• Sreeni.Padmanabhan_at_uspto.gov