Fu disclosed an imaging member for use in electrophotography containing a surfactant composed of a poly(fluoroacrylate)-graft-poly(methyl methacrylate). The USPTO rejected this application as obvious under 35 USC §103(a) in light of several patents, including a patent to Yamamoto, which disclosed a genus of surfactants having a perfluoroalkyl radical without specifically mentioning the compound disclosed by Fu, and a patent to Yoshida, which disclosed a fluorine-containing surfactant that was a poly(fluoroacry1ate)-graft-poly(methy1methacrylate).
The Board of Patent Appeals affirmed the obviousness rejection. Applying KSR v. Teleflex, the court found that the prior art, specifically the Yamamoto and Yoshida patents, established a prima facie case of obviousness as to the Fu invention. Furthermore, the genus of surfactants disclosed by Yamamoto, while broad, contained a finite number of species and thus one having ordinary skill in the art would have "anticipated success" in trying the claimed surfactant species. Additionally, no secondary indicia of non-obviousness, such as teaching away from the invention by the prior art, were offered by the applicants.
In a precedential holding, the board stated: "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. 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 particularly when that disclosure indicates a preference leading away from the claimed compounds."
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