PTO Rejects Federal Circuit Decision, In Re Baird

In a highly unusual action, the PTO issued a Notice to Examiners on March 29, 1994 (1161 O.G. 314, No. 3, April 19, 1994), directing them to disregard In re Baird, 29 USPQ2d 1550 (Fed. Cir. 1994) in assessing obviousness under 35 USC 103.

In Baird, the Federal Circuit found the claimed compound to be not obvious in view of prior art disclosing a large number of variables encompassing more then 108 different compounds, only one of which was the claimed compound. The court observed that there was nothing in the prior art suggesting that one should select one of the claimed compounds and indeed the prior art appeared to teach away from selection of the claimed compounds.

In our April, 1994 Report, we discussed In re Bell, 26 USPQ2d 1529 (Fed. Cir. 1993) and noted that Bell was cited with approval in Baird. In Bell, the Court concluded that given the nearly infinite number of possibilities suggested by the prior art, and the failure of the cited prior art to suggest which of these possibilities is the claimed "compound", the claimed "compound" would not be obvious. Given the 1036 prior art possible "compounds" in Bell and 108 prior art possible compounds in Baird, we queried as to how few prior art possible compounds may be disclosed, permitting a selected claimed compound to be non-obvious. The PTO has now answered this question, finding even 108 prior art possible compounds to be too few.

The PTO Notice states that: 1) Baird was wrongly decided by the Court and an improper standard of patentability under 35 USC 103 was applied in assessing the obviousness question; 2) the Court's decision in Baird is inconsistent with applicable binding precedent; 3) Patent Examiners are directed to follow proper precedent based upon In re Susi, 169 USPQ 423 (CCPA 1971) and Merck v. Biocraft Laboratories, 10 USPQ2d 1843 (Fed. Cir. 1989); and 4) Examiners are to cite the Notice as a full response to any applicant who may rely upon the Baird decision in responding to rejections. Apparently, the Notice was induced by PTO concerns that citations of Baird would prevent Examiners from determining that a specific chemical compound is obvious in view of a prior art reference to a broad genus that includes the specific compound.

The PTO cites Susi wherein the Court found claimed compounds to be obvious, relying upon prior art disclosure of an admittedly "huge" genus of compounds but including at least some of the claimed compounds. The PTO also cites Merck wherein the Court found the claimed compounds to be obvious even though the prior art disclosed about 1,200 compounds within the relevant genus.

The Baird court relied upon In re Jones, 21 USPQ2d 1941 (Fed. Cir. 1992) which was decided subsequent to Susi and Merck. The Jones Court rejected the PTO's argument that regardless how broad a disclosure of a chemical genus, it renders obvious any species that falls within it.

The PTO rejection of Baird will undoubtedly be challenged. Nevertheless, our patent practice must adjust to the fact that PTO Examiners will reject arguments based upon the Baird decision in responding to rejections under 35 USC 103.