Appeal No. 2003-0540 Page 9
Application No. 09/737,001
of Appeals that one of the claims, adopted for purposes of interference, was not
supported by the disclosure. The claim at issue in that case was directed to a single
compound. The applicants argued that, although the compound itself was not
disclosed, one skilled in the art would find support for the claimed compound in the
general disclosure of the genus of compounds to which the claimed compound
belonged. The Ruschig court rejected that argument, stating that
[i]t is an old custom in the woods to mark trails by making blaze marks on the
trees. It is of no help in finding a trail or in finding one's way through the woods
where the trails have disappeared—or have not yet been made, which is more
like the case here—to be confronted simply by a large number of unmarked
trees. We are looking for blaze marks which single out particular trees. We see
none. Id. at 994-95, 154 USPQ at 122.
Although this case differs from Ruschig in that what was disclosed in Ruschig was a
genus encompassing potentially half a million compounds, the rationale applies equally
to this case, in which a multitude of ionomer resins and blends thereof are disclosed,
with no “blaze marks” directing the skilled artisan to the claimed Shore D hardness
ranges or what the difference in hardness should exceed. See id. at 994, 154 USPQ at
122 (“Specific claims to single compounds require reasonably specific supporting
disclosure and while we agree with the appellants, as the board did, that naming is not
essential, something more than the disclosure of a class of 1000, or 100, or even 48,
compounds is required.”). As Ruschig makes clear, one cannot disclose a forest in the
original application, and then later pick a tree out of the forest and say “here is my
invention.” In order to satisfy the written description requirement, the blaze marks
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