Appeal 2006-2269
Application 10/051,938
Furthermore, given the factual scenario present in this appeal, we find
that the Examiner’s application of the holding in In re Smith, 458 F.2d 1389,
173 USPQ 679 (CCPA 1972) to be appropriate. Zehler ‘179 discloses a
genus of compounds (i.e., monovalent and divalent acids) with a specific
example to a species within the genus presented in Table 3 of Zehler ‘179
(i.e., mixture of penatnoic acid, 3-methyl butanoic acid, and 2-methyl
butanoic acid with either adipic or azealaic acid). Appellant now claims a
subgenus (i.e., monocarboxylic acids and dicarboxylic acid). We find
proper the Examiner’s determination that the disclosure in Zehler ‘179 of a
genus (i.e., monvalent and divalent acids) and a species (i.e., pentanoic acid,
butanoic acid, adipic acid and azelaic acid) within a subgenus (i.e.,
monocarboxylic and dicarboxylic acids) is not necessarily a sufficient
description of the subgenus. Smith, 458 F.2d at 1395, 173 USPQ at 684. As
discussed previously, we find no disclosure of the mixture of “two or more
C5, C6, C7, C8 and C9 monocarboxylic acids” with a dicarboxylic acid in
Appellant’s original description.
As the Examiner has established via reasoning why one of ordinary
skill in the art would not have considered Appellant’s particular claimed
combination of monocarboxylic acids and dicarboxylic acid to be described
in the originally filed Specification, a prima facie case of lack of written
description has been made. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996). To overcome a prima facie case of lack of
written description, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. Id. at 1584-85. After the
Applicant has submitted evidence or argument in response to the Examiner’s
prima facie case, patentability is determined on the totality of the record by a
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