Ex parte Fu

When the prior art discloses a genus containing a broad but finite number of known options that predictably solve the same problem and includes the claimed species, the Board may find the species prima facie obvious under an "obvious to try" rationale under KSR, and cannot treat a species claim as per se patentable over such a genus. The applicant must then rebut with evidence such as secondary considerations (e.g., unexpected results) or a showing that the prior art teaches away from the species. No prior Board precedent is named in the text as directly addressing this issue; the Board applies KSR and expressly rejects a per se rule that a species claim is patentable over a prior art genus. For an examiner, a finite known genus, a shared purpose and a reference showing the species working in a similar context can support prima facie obviousness, even without a species-specific motivation. For an applicant, arguing that the species was not specifically selected, or that the claimed purpose differs from the prior art purpose, will not suffice, and the applicant needs real evidence like unexpected results or teaching away. The Board relied on KSR, Graham, In re Ochiai (per se obviousness rules must cease), Merck v. Biocraft, In re Corkill, In re Kemps, In re Dillon and In re Keller. LEGAL TEST OR STANDARD: Graham framework as reaffirmed by KSR: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and the claims at issue; and (3) resolving the level of ordinary skill in the pertinent art, with secondary considerations. Under KSR's obvious-to-try language, where there is a design need or market pressure and a finite number of identified, predictable solutions, a skilled person has good reason to pursue the known options within technical grasp, and anticipated success shows obviousness. The Board also found the result would pass the more rigorous teaching, suggestion, or motivation test. TRIGGERING FACTS: The prior art (Yamamoto) disclosed a genus of perfluoroalkyl surfactants for charge-transport layers, not limited to any species; the claimed poly(fluoroacrylate)-graft-poly(methyl methacrylate) species fell within the genus (undisputed); the genus was large but finite; other references (Yoshida, Chambers) showed the commercial GF-300 species successfully dispersing particles in similar charge-transport layers; no teaching away; appellants offered no secondary considerations such as unexpected results. KEY QUOTE: "We expressly reject the notion that a claim reciting a species is per se patentable when the prior art discloses a genus encompassing a broad but finite number of known options which include the claimed species." (p. 17) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), and distinguishes In re Baird, 16 F.3d 380 (Fed. Cir. 1992), because here the prior art did not teach away. It also cites Merck & Co. v. Biocraft Labs., 874 F.2d 804 (Fed. Cir. 1989), and In re Corkill, 771 F.2d 1496 (Fed. Cir. 1985), as consistent. PRACTICE TIP: When a species claim falls within a finite prior art genus, do not argue that the examiner used an improper obvious-to-try rationale or that no species-specific motivation exists. Build a record of unexpected results or teaching away, because a different purpose than the prior art's does not defeat a prima facie case.