New Precedential KSR Decision From the BPAI

Ex Parte Fu (Appeal 2008-0601), March 31, 2008

In a somewhat unremarkable, yet meaningful decision, the BPAI upheld a 103 rejection on an application related to an electrostatographic imaging member having a charge transport layer containing a specified surfactant that reduces crystallization of the charge transport layer material. The charge transport layer element was recited in the claim as "consisting of" specific compunds.

The rejection was based on a primary reference (Yamamoto) that taught most of the features recited in the claims, except that a generic surfactant was disclosed, without specifying any particular compound. Secondary references were relied on to show that the claimed compounds were used in charge transport materials.

While recognizing the broad genus disclosed in Yamamoto, the BPAI nevertheless determined that the genus was finite, and thus qualified as 103 art under the circumstances:

While Yamamoto's genus of surfactants is arguably broad, it nevertheless consists of only a finite number of known perfluoroalkyl surfactants that predictably solve the dispersion problem of the charge transport agent into the binder resin. Accordingly, a person having ordinary skill in the art would have had "good reason to pursue" the use of GF-300, the claimed surfactant species. It would have been within the "technical grasp" of that person having ordinary skill in the art to understand that this known surfactant, which was readily available in commerce, has the
perfluoroalkyl group as required by Yamamoto.

The most noteworthey part of the BAPI's rationale in this case is that the disclosure of the genus alone would be grounds for obviousness:

Because that person having ordinary skill in the art would have "anticipated success" in trying GF-300 perfluoroalkyl surfactant in view of Yamamoto's teachings, the subject matter of appealed claim 1 would have been prima facie obvious over Yamamoto alone.

Adds the BPAI:

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. We hold that such aper se approach would be contrary to the clear command of our reviewing court [In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995)("[R]eliance on per se rules of obviousness is legally incorrect and must cease.")]. That is not to say, however, that an applicant would never be entitled to a patent in a situation as here. For example, KSR and Graham, as well as a myriad of precedents of our reviewing court, teach that secondary considerations such as unexpected results may confer patentability. Also, for example, patentability may be shown if the prior art teaches away from the species within the genus. But here, Appellants did not rely on any such persuasive evidence in support of nonobviousness.

AFFIRMED

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