# MPEP § 2144.08: Obviousness of Species When Prior Art Teaches Genus

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/MPEP_S2144.08

## Section

- **Citation:** MPEP § 2144.08
- **Heading:** Obviousness of Species When Prior Art Teaches Genus
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO MPEP / Chapter 2100 - Patentability / MPEP § 2144.08

## Text

[Editor Note: This MPEP section is applicable regardless of whether an
application is examined under the AIA or under pre-AIA law. For applications subject
to the first inventor to file (FITF) provisions of the AIA, the relevant time is
"before the effective filing date of the claimed invention". For applications subject
to
pre-AIA 35
U.S.C. 102
, the relevant time is "at the time of the
invention". See
MPEP § 2150
et seq. Many of the
court decisions discussed in this section involved applications or patents subject to
pre-AIA 35
U.S.C. 102
. These court decisions may be applicable to
applications and patents subject to
AIA 35 U.S.C. 102
but the
relevant time is before the effective filing date of the claimed invention and not at
the time of the invention.]
I.
EXAMINATION OF CLAIMS DIRECTED TO SPECIES BASED UPON A SINGLE PRIOR ART
REFERENCE
When a single prior art reference which discloses a genus
encompassing the claimed species or subgenus but does not expressly disclose the
particular claimed species or subgenus, Office personnel should attempt to 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. Where such
additional prior art is not found, Office personnel should consider the factors
discussed below to determine whether a single reference
35 U.S.C. 103
rejection would be appropriate.
II.
DETERMINE WHETHER THE CLAIMED SPECIES OR SUBGENUS WOULD HAVE BEEN OBVIOUS TO
ONE OF ORDINARY SKILL IN THE PERTINENT ART AT THE RELEVANT TIME
The patentability of a claim to a specific compound, species, or
subgenus embraced by a prior art genus should be analyzed no differently than any
other claim for purposes of
35 U.S.C. 103
. “The section 103
requirement of unobviousness is no different in chemical cases than with respect to
other categories of patentable inventions.”
In re Papesch,
315
F.2d 381, 385, 137 USPQ 43, 47 (CCPA 1963). A determination of patentability under
35 U.S.C
pound, species, or
subgenus embraced by a prior art genus should be analyzed no differently than any
other claim for purposes of
35 U.S.C. 103
. “The section 103
requirement of unobviousness is no different in chemical cases than with respect to
other categories of patentable inventions.”
In re Papesch,
315
F.2d 381, 385, 137 USPQ 43, 47 (CCPA 1963). A determination of patentability under
35 U.S.C.
103
should be made upon the facts of the particular case in
view of the totality of the circumstances. See, e.g.,
In re
Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(en banc)
. Use of
per se
rules by Office
personnel is improper for determining whether claimed subject matter would have been
obvious under
35
U.S.C. 103
. See, e.g.,
In re Brouwer,
77
F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996);
In re
Ochiai,
71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995);
In re Baird,
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994). 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) (“The fact that a claimed compound may be encompassed by a
disclosed generic formula does not by itself render that compound obvious.”);
In re Jones,
958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) (Federal Circuit has “decline[d] to extract from
Merck
[
& Co. v. Biocraft Laboratories Inc.,
874 F.2d 804, 10
USPQ2d 1843 (Fed. Cir. 1989)] the rule that... regardless of how broad, a disclosure
of a chemical genus renders obvious any species that happens to fall within it.”).
A.
Establishing a Prima Facie Case of Obviousness
Office personnel must consider the factors set out by the Supreme
Court in
Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966)
in order to establish a
prima facie
case of obviousness. See,
e.g.,
In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir
sclosure
of a chemical genus renders obvious any species that happens to fall within it.”).
A.
Establishing a Prima Facie Case of Obviousness
Office personnel must consider the factors set out by the Supreme
Court in
Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966)
in order to establish a
prima facie
case of obviousness. See,
e.g.,
In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (“The PTO bears the burden of establishing a case of
prima
facie
obviousness.”);
In re Rijckaert,
9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993);
In re
Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Graham
at 17-18, 148 USPQ at 467 requires that to make out a
case of obviousness, one must:
(A) determine the scope and contents of the prior art;
(B) ascertain the differences between the prior art and the
claims in issue;
(C) determine the level of ordinary skill in the pertinent art;
and
(D) evaluate any evidence of secondary considerations.
If a
prima facie
case is established, the
burden shifts to applicant to come forward with rebuttal evidence or argument to
overcome the
prima facie
case. See, e.g.,
Bell,
991 F.2d at 783-84, 26 USPQ2d at 1531;
Rijckaert,
9 F.3d at 1532, 28 USPQ2d at 1956;
Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. Office
personnel should evaluate, when appropriate, the totality of the facts and all of
the evidence to determine whether they still support a conclusion that the claimed
invention would have been obvious to one of ordinary skill in the art at the
relevant time. See
Graham,
at 17-18, 148 USPQ at 467. See,
e.g.,
MPEP §§
714.12
,
714.13
, and
715.09
for
guidance when rebuttal evidence or argument may not be considered.
1.
Determine the Scope and Content of the Prior Art
After construing the claims, Office personnel should determine
the scope and content of the relevant prior art. Each reference to be applied
as the basis for an obviousness rejection must qualify as prior art under
35 U.S.C.
102
(e.g.,
Panduit Corp. v. Dennison Mfg
and
715.09
for
guidance when rebuttal evidence or argument may not be considered.
1.
Determine the Scope and Content of the Prior Art
After construing the claims, Office personnel should determine
the scope and content of the relevant prior art. Each reference to be applied
as the basis for an obviousness rejection must qualify as prior art under
35 U.S.C.
102
(e.g.,
Panduit Corp. v. Dennison Mfg.
Co.,
810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987)
(“Before answering
Graham’s
‘content’ inquiry, it must be
known whether a patent or publication is in the prior art under
35 U.S.C.
§ 102
.”)) and must also be analogous art to the claimed
invention. See
MPEP § 2141.01(a)
.
In the case of a prior art reference disclosing a genus,
Office personnel should make findings as to:
(A) the structure of the disclosed prior art genus and that
of any expressly described species or subgenus within the genus;
(B) any physical or chemical properties and utilities
disclosed for the genus, as well as any suggested limitations on the
usefulness of the genus, and any problems alleged to be addressed by the
genus;
(C) the predictability of the technology; and
(D) the number of species encompassed by the genus taking
into consideration all of the variables possible.
2.
Ascertain the Differences Between the Closest Disclosed Prior Art
Species or Subgenus of Record and the Claimed Species or Subgenus
Once the structure of the disclosed prior art genus and that
of any expressly described species or subgenus within the genus are identified,
Office personnel should compare it to the claimed species or subgenus to
determine the differences. Through this comparison, the closest disclosed
species or subgenus in the prior art reference should be identified and
compared to that claimed
ies or Subgenus
Once the structure of the disclosed prior art genus and that
of any expressly described species or subgenus within the genus are identified,
Office personnel should compare it to the claimed species or subgenus to
determine the differences. Through this comparison, the closest disclosed
species or subgenus in the prior art reference should be identified and
compared to that claimed. Office personnel should make explicit findings on the
similarities and differences between the closest disclosed prior art species or
subgenus of record and the claimed species or subgenus including findings
relating to similarity of structure, properties and utilities. In
Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1537,
218 USPQ 871, 877 (Fed. Cir. 1983), the court noted that “the question under
35 U.S.C.
§ 103
is not whether the differences [between the claimed
invention and the prior art] would have been obvious” but “whether the claimed
invention
as a whole
would have been obvious.” (emphasis in
original).
3.
Determine the Level of Skill in the Art
Office personnel should evaluate the prior art from the
standpoint of the hypothetical person having ordinary skill in the art at the
time the claimed invention was made. See,
Ryko Mfg. Co. v.
Nu-Star Inc.,
950 F.2d 714, 718, 21 USPQ2d 1053, 1057 (Fed.
Cir. 1991) (“The importance of resolving the level of ordinary skill in the art
lies in the necessity of maintaining objectivity in the obviousness inquiry.”);
Uniroyal Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1050,
5 USPQ2d 1434, 1438 (Fed. Cir. 1988) (evidence must be viewed from position of
ordinary skill, not of an expert). In most cases, the only facts of record
pertaining to the level of skill in the art will be found within the prior art
reference and a discussion of the level of ordinary skill will not be needed.
See
MPEP §
2141.03
, subsection II. However, any additional
evidence presented by applicant should be evaluated. See
MPEP §§
2141
, subsection II, and
2141.03
,
subsection III.
4
kill, not of an expert). In most cases, the only facts of record
pertaining to the level of skill in the art will be found within the prior art
reference and a discussion of the level of ordinary skill will not be needed.
See
MPEP §
2141.03
, subsection II. However, any additional
evidence presented by applicant should be evaluated. See
MPEP §§
2141
, subsection II, and
2141.03
,
subsection III.
4.
Determine Whether One of Ordinary Skill in the Art Would Have Had a
Reason To Select the Claimed Species or Subgenus
In light of the findings made relating to the
Graham
factors, Office personnel should determine whether
it would have been obvious to one of ordinary skill in the relevant art to make
the claimed invention as a whole, i.e., to select the claimed species or
subgenus from the disclosed prior art genus. To address this key issue, Office
personnel should consider all relevant prior art teachings, focusing on the
following, where present.
(a)
Consider the Size of the Genus
Consider the size of the prior art genus, bearing in mind
that size alone cannot support an obviousness rejection. There is no
absolute correlation between the size of the prior art genus and a
conclusion of obviousness. See, e.g.,
Baird,
16 F.3d at
383, 29 USPQ2d at 1552. Thus, the mere fact that a prior art genus contains
a small number of members does not create a
per se
rule
of obviousness. Even where the genus contains a small number of members, the
disclosed genus may not possess a recognizable class of compounds with
common properties. This is a distinction between an obviousness rejection
and an anticipation rejection. Contrast the obviousness consideration with
an anticipation rejection where it is clear that each member of the small
genus contains common properties. A genus may be so small that, when
considered in light of the totality of the circumstances, it would
anticipate the claimed species or subgenus
ommon properties. This is a distinction between an obviousness rejection
and an anticipation rejection. Contrast the obviousness consideration with
an anticipation rejection where it is clear that each member of the small
genus contains common properties. A genus may be so small that, when
considered in light of the totality of the circumstances, it would
anticipate the claimed species or subgenus. For example, it has been held
that a prior art genus containing only 20 compounds and a limited number of
variations in the generic chemical formula inherently anticipated a claimed
species within the genus because “one skilled in [the] art would... envisage
each member
” of the genus.
In re
Petering,
301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962)
(emphasis in original). More specifically, the court in
Petering
stated:
A simple calculation will show that, excluding
isomerism within certain of the R groups, the limited class we find in
Karrer contains only 20 compounds. However, we wish to point out that it
is not the mere number of compounds in this limited class which is
significant here but, rather, the total circumstances involved, including
such factors as the limited number of variations for R, only two
alternatives for Y and Z, no alternatives for the other ring positions,
and a large unchanging parent structural nucleus. With these
circumstances in mind, it is our opinion that Karrer has described to
those with ordinary skill in this art each of the various permutations
here involved as fully as if he had drawn each structural formula or had
written each name.
Id.
(emphasis in original).
Accord In re
Schaumann,
572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978) (prior
art genus encompassing claimed species which disclosed preference for lower
alkyl secondary amines, as well as properties possessed by the claimed
compound constituted description of claimed compound for purposes of
pre-AIA
35 U.S.C. 102(b)
)
awn each structural formula or had
written each name.
Id.
(emphasis in original).
Accord In re
Schaumann,
572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978) (prior
art genus encompassing claimed species which disclosed preference for lower
alkyl secondary amines, as well as properties possessed by the claimed
compound constituted description of claimed compound for purposes of
pre-AIA
35 U.S.C. 102(b)
).
C.f.,
In re Ruschig,
343 F.2d 965, 974, 145 USPQ 274, 282 (CCPA
1965) (Rejection of claimed compound in light of prior art genus based on
Petering
is not appropriate where the prior art does
not disclose a small recognizable class of compounds with common
properties.).
(b)
Consider the Express Teachings
If the prior art reference expressly teaches a particular
reason to select the claimed species or subgenus, Office personnel should
point out the express disclosure and explain why it would have been obvious
to one of ordinary skill in the art to select the claimed invention. An
express teaching may be based on a statement in the prior art reference such
as an art recognized equivalence. For example, see
Merck & Co.
v. Biocraft Labs.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989) (holding claims directed to diuretic compositions
comprising a specific mixture of amiloride and hydrochlorothiazide were
obvious over a prior art reference expressly teaching that amiloride was a
pyrazinoylguanidine which could be coadministered with potassium excreting
diuretic agents, including hydrochlorothiazide which was a named example, to
produce a diuretic with desirable sodium and potassium eliminating
properties). See also,
In re Kemps,
97 F.3d 1427, 1430,
40 USPQ2d 1309, 1312 (Fed. Cir. 1996) (holding it would have been obvious to
combine teachings of prior art to achieve claimed invention where one
reference specifically refers to the other).
xcreting
diuretic agents, including hydrochlorothiazide which was a named example, to
produce a diuretic with desirable sodium and potassium eliminating
properties). See also,
In re Kemps,
97 F.3d 1427, 1430,
40 USPQ2d 1309, 1312 (Fed. Cir. 1996) (holding it would have been obvious to
combine teachings of prior art to achieve claimed invention where one
reference specifically refers to the other).
(c)
Consider the Teachings of Structural Similarity
Consider any teachings of a “typical,” “preferred,” or
“optimum” species or subgenus within the disclosed genus. If such a prior
art species or subgenus is structurally similar to that claimed, its
disclosure may provide a reason for one of ordinary skill in the art to
choose the claimed species or subgenus from the genus, based on the
reasonable expectation that structurally similar species usually have
similar properties. See, e.g.,
Dillon,
919 F.2d at 693,
696, 16 USPQ2d at 1901, 1904. See also
In re Deuel,
51
F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995) (“Structural
relationships may provide the requisite motivation or suggestion to modify
known compounds to obtain new compounds. For example, a prior art compound
may suggest its homologs because homologs often have similar properties and
therefore chemists of ordinary skill would ordinarily contemplate making
them to try to obtain compounds with improved properties.”).
In making an obviousness determination, Office personnel
should consider the number of variables which must be selected or modified,
and the nature and significance of the differences between the prior art and
the claimed invention. See, e.g.,
In re Jones,
958 F.2d
347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir
ld ordinarily contemplate making
them to try to obtain compounds with improved properties.”).
In making an obviousness determination, Office personnel
should consider the number of variables which must be selected or modified,
and the nature and significance of the differences between the prior art and
the claimed invention. See, e.g.,
In re Jones,
958 F.2d
347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992) (reversing obviousness
rejection of novel dicamba salt with acyclic structure over broad prior art
genus encompassing claimed salt, where disclosed examples of genus were
dissimilar in structure, lacking an ether linkage or being cyclic);
In re Susi,
440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA
1971) (the difference from the particularly preferred subgenus of the prior
art was a hydroxyl group, a difference conceded by applicant “to be of
little importance”). In the area of biotechnology, an exemplified species
may differ from a claimed species by a conservative substitution (“the
replacement in a protein of one amino acid by another, chemically similar,
amino acid... [which] is generally expected to lead to either no change or
only a small change in the properties of the protein.”
Dictionary
of Biochemistry and Molecular Biology
97 (John Wiley &
Sons, 2d ed. 1989)). The effect of a conservative substitution on protein
function depends on the nature of the substitution and its location in the
chain. Although at some locations a conservative substitution may be benign,
in some proteins only one amino acid is allowed at a given position. For
example, the gain or loss of even one methyl group can destabilize the
structure if close packing is required in the interior of domains. James
Darnell
et al.,
Molecular Cell Biology
51 (W. H. Freeman & Co., 2d
ed. 1990)
ution and its location in the
chain. Although at some locations a conservative substitution may be benign,
in some proteins only one amino acid is allowed at a given position. For
example, the gain or loss of even one methyl group can destabilize the
structure if close packing is required in the interior of domains. James
Darnell
et al.,
Molecular Cell Biology
51 (W. H. Freeman & Co., 2d
ed. 1990).
The closer the physical and/or chemical similarities
between the claimed species or subgenus and any exemplary species or
subgenus disclosed in the prior art, the greater the expectation that the
claimed subject matter will function in an equivalent manner to the genus.
See, e.g.,
Dillon,
919 F.2d at 696, 16 USPQ2d at 1904
(and cases cited therein).
Cf.
Baird,
16 F.3d at 382-83, 29 USPQ2d at 1552 (disclosure
of dissimilar species can provide teaching away).
Similarly, consider any teaching or suggestion in the
reference of a preferred species or subgenus that is significantly different
in structure from the claimed species or subgenus. Such a teaching may weigh
against selecting the claimed species or subgenus and thus against a
determination of obviousness.
Baird,
16 F.3d at 382-83,
29 USPQ2d at 1552 (reversing obviousness rejection of species in view of
large size of genus and disclosed “optimum” species which differed greatly
from and were more complex than the claimed species);
Jones,
958 F.2d at 350, 21 USPQ2d at 1943 (reversing
obviousness rejection of novel dicamba salt with acyclic structure over
broad prior art genus encompassing claimed salt, where disclosed examples of
genus were dissimilar in structure, lacking an ether linkage or being
cyclic). For example, teachings of preferred species of a complex nature
within a disclosed genus may motivate an artisan of ordinary skill to make
similar complex species and thus teach away from making simple species
within the genus.
Baird,
16 F.3d at 382, 29 USPQ2d at
1552
compassing claimed salt, where disclosed examples of
genus were dissimilar in structure, lacking an ether linkage or being
cyclic). For example, teachings of preferred species of a complex nature
within a disclosed genus may motivate an artisan of ordinary skill to make
similar complex species and thus teach away from making simple species
within the genus.
Baird,
16 F.3d at 382, 29 USPQ2d at
1552. See also
Jones,
958 F.2d at 350, 21 USPQ2d at 1943
(disclosed salts of genus held not sufficiently similar in structure to
render claimed species
prima facie
obvious).
Concepts used to analyze the structural similarity of
chemical compounds in other types of chemical cases are equally useful in
analyzing genus-species cases. For example, a claimed tetra-orthoester fuel
composition was held to be obvious in light of a prior art tri-orthoester
fuel composition based on their structural and chemical similarity and
similar use as fuel additives.
Dillon,
919 F.2d at
692-93, 16 USPQ2d at 1900-02. Likewise, claims to amitriptyline used as an
antidepressant were held obvious in light of the structural similarity to
imipramine, a known antidepressant prior art compound, where both compounds
were tricyclic dibenzo compounds and differed structurally only in the
replacement of the unsaturated carbon atom in the center ring of
amitriptyline with a nitrogen atom in imipramine.
In re Merck &
Co.,
800 F.2d 1091, 1096-97, 231 USPQ 375, 378-79 (Fed. Cir.
1986). Other structural similarities have been found to support a
prima facie
case of obviousness. See, e.g.,
In re May,
574 F.2d 1082, 1093-95, 197 USPQ 601,
610-11 (CCPA 1978) (stereoisomers);
In re Wilder,
563
F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and
structural isomers);
In re Hoch,
428 F.2d 1341, 1344, 166
USPQ 406, 409 (CCPA 1970) (acid and ethyl ester);
In re
Druey,
319 F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963) (omission
of methyl group from pyrazole ring)
ess. See, e.g.,
In re May,
574 F.2d 1082, 1093-95, 197 USPQ 601,
610-11 (CCPA 1978) (stereoisomers);
In re Wilder,
563
F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and
structural isomers);
In re Hoch,
428 F.2d 1341, 1344, 166
USPQ 406, 409 (CCPA 1970) (acid and ethyl ester);
In re
Druey,
319 F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963) (omission
of methyl group from pyrazole ring). Generally, some teaching of a
structural similarity will be necessary to suggest selection of the claimed
species or subgenus.
Id.
(d)
Consider the Teachings of Similar Properties or Uses
Consider the properties and utilities of the structurally
similar prior art species or subgenus. It is the properties and utilities
that provide real world motivation for a person of ordinary skill to make
species structurally similar to those in the prior art.
Dillon,
919 F.2d at 697, 16 USPQ2d at 1905;
In re Stemniski,
444 F.2d 581, 586, 170 USPQ 343, 348
(CCPA 1971). Conversely, lack of any known useful properties weighs against
a finding of motivation to make or select a species or subgenus.
In
re Albrecht,
514 F.2d 1389, 1392, 1395-96, 185 USPQ 585, 587,
590 (CCPA 1975) (The prior art compound so irritated the skin that it could
not be regarded as useful for the disclosed anesthetic purpose, and
therefore a person skilled in the art would not have been motivated to make
related compounds.);
Stemniski,
444 F.2d at 586, 170 USPQ
at 348 (close structural similarity alone is not sufficient to create a
prima facie
case of obviousness when the reference
compounds lack utility, and thus there is no motivation to make related
compounds.). However, the prior art need not disclose a newly discovered
property in order for there to be a
prima facie
case of
obviousness.
Dillon,
919 F.2d at 697, 16 USPQ2d at
1904-05 (and cases cited therein)
close structural similarity alone is not sufficient to create a
prima facie
case of obviousness when the reference
compounds lack utility, and thus there is no motivation to make related
compounds.). However, the prior art need not disclose a newly discovered
property in order for there to be a
prima facie
case of
obviousness.
Dillon,
919 F.2d at 697, 16 USPQ2d at
1904-05 (and cases cited therein). If the claimed invention and the
structurally similar prior art species share any useful property, that
will generally be sufficient to motivate an artisan of ordinary skill to
make the claimed species,
e.g., id.
For example, based on
a finding that a tri-orthoester and a tetra-orthoester behave similarly in
certain chemical reactions, it has been held that one of ordinary skill in
the relevant art would have been motivated to select either structure. 919
F.2d at 692, 16 USPQ2d at 1900-01. In fact, similar properties may normally
be presumed when compounds are very close in structure.
Dillon,
919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904.
See also
In re Grabiak,
769 F.2d 729, 731, 226 USPQ 870,
871 (Fed. Cir. 1985) (“When chemical compounds have ‘very close’ structural
similarities and similar utilities, without more a
prima
facie
case may be made.”). Thus, evidence of similar properties
or evidence of any useful properties disclosed in the prior art that would
be expected to be shared by the claimed invention weighs in favor of a
conclusion that the claimed invention would have been obvious.
Dillon,
919 F.2d at 697-98, 16 USPQ2d at 1905;
In re Wilder,
563 F.2d 457, 461, 195 USPQ 426,
430 (CCPA 1977);
In re Lintner,
458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972).
ar properties
or evidence of any useful properties disclosed in the prior art that would
be expected to be shared by the claimed invention weighs in favor of a
conclusion that the claimed invention would have been obvious.
Dillon,
919 F.2d at 697-98, 16 USPQ2d at 1905;
In re Wilder,
563 F.2d 457, 461, 195 USPQ 426,
430 (CCPA 1977);
In re Lintner,
458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972).
(e)
Consider the Predictability of the Technology
Consider the predictability of the technology. See, e.g.,
Dillon,
919 F.2d at 692-97, 16 USPQ2d at 1901-05;
In re Grabiak,
769 F.2d 729, 732-33, 226 USPQ 870, 872
(Fed. Cir. 1985). If the technology is unpredictable, it is less likely that
structurally similar species will render a claimed species obvious because
it may not be reasonable to infer that they would share similar properties.
See, e.g.
, In re May,
574 F.2d 1082, 1094, 197 USPQ 601,
611 (CCPA 1978)
(prima facie
obviousness of claimed
analgesic compound based on structurally similar prior art isomer was
rebutted with evidence demonstrating that analgesia and addiction properties
could not be reliably predicted on the basis of chemical structure);
In re Schechter,
205 F.2d 185, 191, 98 USPQ 144, 150
(CCPA 1953) (unpredictability in the insecticide field, with homologs,
isomers and analogs of known effective insecticides having proven
ineffective as insecticides, was considered as a factor weighing against a
conclusion of obviousness of the claimed compounds). However, obviousness
does not require absolute predictability, only a reasonable expectation of
success, i.e., a reasonable expectation of obtaining similar properties.
See
,
e.g.
,
In re O’Farrell,
853 F.2d 894, 903, 7 USPQ2d 1673, 1681
(Fed. Cir. 1988).
es having proven
ineffective as insecticides, was considered as a factor weighing against a
conclusion of obviousness of the claimed compounds). However, obviousness
does not require absolute predictability, only a reasonable expectation of
success, i.e., a reasonable expectation of obtaining similar properties.
See
,
e.g.
,
In re O’Farrell,
853 F.2d 894, 903, 7 USPQ2d 1673, 1681
(Fed. Cir. 1988).
(f)
Consider Any Other Teaching To Support the Selection of the Species
or Subgenus
The categories of relevant teachings enumerated above are
those most frequently encountered in a genus-species case, but they are not
exclusive. Office personnel should consider the totality of the evidence in
each case. In unusual cases, there may be other relevant teachings
sufficient to support the selection of the species or subgenus and,
therefore, a conclusion of obviousness.
5.
Make Express Fact-Findings and Determine Whether They Support a
Prima Facie
Case of Obviousness
Based on the evidence as a whole
(In re
Bell,
991 F.2d 781,784, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993);
In re Kulling,
897 F.2d 1147, 1149, 14 USPQ2d 1056, 1057
(Fed. Cir. 1990)), Office personnel should make express fact-findings relating
to the
Graham
factors, focusing primarily on the prior art
teachings discussed above. The fact-findings should specifically articulate any
teachings or suggestions in the prior art that would have motivated one of
ordinary skill in the art to select the claimed species or subgenus.
Kulling,
897 F.2d at 1149, 14 USPQ2d at 1058;
Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1579
n.42, 1 USQP2d 1593, 1606 n.42 (Fed. Cir. 1987). The fact-findings should state
a rationale, as required by
KSR,
that supports a conclusion
that the claimed invention would have been obvious. Thereafter, it should be
determined whether these findings, considered as a whole, establish a
prima facie
case that the claimed invention would have
been obvious to one of ordinary skill in the relevant art at the relevant time.

## Nearby sections

- [MPEP § 2103 Patent Examination Process](https://www.frixlaw.com/law-library/statutes/MPEP_S2103.md)
- [MPEP § 2104 Requirements of 35 U.S.C. 101](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.md)
- [MPEP § 2104.01 Barred by Atomic Energy Act](https://www.frixlaw.com/law-library/statutes/MPEP_S2104.01.md)
- [MPEP § 2105 Patent Eligible Subject Matter — Living Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2105.md)
- [MPEP § 2106 Patent Subject Matter Eligibility](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.md)
- [MPEP § 2106.01 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.01.md)
- [MPEP § 2106.02 [Reserved]](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.02.md)
- [MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.03.md)
- [MPEP § 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04.md)
- [MPEP § 2106.04(a) Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a).md)
- [MPEP § 2106.04(a)(1) Examples of Claims That Do Not Recite Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(1).md)
- [MPEP § 2106.04(a)(2) Abstract Idea Groupings](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(2).md)
- [MPEP § 2106.04(a)(3) Tentative Abstract Ideas](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(a)(3).md)
- [MPEP § 2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature](https://www.frixlaw.com/law-library/statutes/MPEP_S2106.04(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/MPEP_S2144.08. Check the current official text before relying on it. Not legal advice.