Appeal No. 2000-0022
Application No. 08/888,173
e.g., In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681
(Fed. Cir. 1990).
B. Application of the Applicable Law to the Present Case
In the instant case, the examiner states that Kautsky
teaches the generic formula set forth in the paragraph bridging
columns 1 and 2, and that appellants’ claims are directed to a
subgenus of this formula. (answer, pages 3-4). It appears from
the examiner’s stated position, that the examiner believes that
the generic formula of Kautsky is sufficient to make out a prima
facie case for appellants’ claimed subgenus. It therefore
appears that the examiner is applying the now forbidden per se
rule discussed, supra.
Appellants acknowledge that the extremely broad generic
disclosure bridging columns 1 and 2 of Kautsky encompasses
appellants’ claimed invention; but argue that the specific
teachings of Kautsky draw one away from their claimed invention.
(brief, pages 6-7).
Appellants further state that the generic formula of
Kautsky, wherein “R” is between 2 and 12 and “n” is between 1 to
5, includes at least 200,000 compounds. (brief, page 5).
Appellants argue that their claimed invention is significantly
more narrow than the generic disclosure of Kautsky with respect
to the alkylene groups in the terminal position, i.e., n and m,
which are overlapped by R in the Kautsky formula at column 1.
Appellants also argue that their terminal groups are limited to
2-4 carbon atoms, while Kautsky is directed to an uninterrupted
chain from at least 2 carbons up to and including 12 carbons.
Appellants state that in this regard, in this critical terminal
position, appellants have directed their claimed invention to a
species, wherein the alkylene units are 2 to 4 carbons as
opposed to 2 to 12 carbons. Appellants state this is
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