In re Baird

   In view of the public hearing held on the standard of nonobviousness
under 35 U.S.C.    103 and written comments received pursuant to the
hearing, the Commissioner of Patents and Tradmarks has reconsidered the
Office's March 22, 1994 Notice, entitled "In re Baird," published in the
Official Gazette on April 19, 1994 (1161 O.G. 314). The notice is hereby
withdrawn.
   The determimation of the patentability of claims to a species within a
prior art genus is highly fact dependent. Thus, patent examiners are
instructed to analyze such claims on a case-by-case basis. See, for
example, In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re
Bell, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993); In re Jones, 958 F.2d
347, 21, USPQ2d 1941 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs.,  874
F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989);
In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Lemin, 332 F.2d
839, 141 USPQ 814 (CCPA 1964); In re Rosicky, 276 F.2d 656, 125 USPQ 341
(CCPA 1960).
   Comprehensive guidelines will follow relating to what evidence is
necessary to establish and to rebut a prima facie case of obviousness in a
case involving a genus-species relationship.

April 17, 1995                                                  BRUCE A. LEHMAN
                                                Assistant Secretary of Commerce
                                                    and Commissioner of Patents
                                                                 and Trademarks