Appeal 2006-2739
Application 09/918,584
The Specification describes both a broader genus, i.e., “any
hyperbranched polymer,” and narrower subgenera of the claimed water-
soluble variety having a hydrophilic group in the backbone or base chain.
We next turn to the relevant principles of law.
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter.” In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The examiner bears the
initial burden of presenting a prima facie case of lack of written descriptive
support. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996) (quoting In re Wertheim, 541 F.2d at 263, 191 USPQ at 97.).
It is well settled that the “disclosure of a species may be sufficient
written descriptive support for a later claimed genus including that species.”
Bilstad v. Wakalopulos, 386 F.3d 1116, 1124, 72 U.S.P.Q.2d 1785, 1791
(Fed. Cir. 2004). There are several exceptions to that general rule. If the
difference between members of the group is such that the person skilled in
the art would not readily discern that other members of the genus would
perform similarly to the disclosed members, i.e., if the art is unpredictable,
then disclosure of more species is necessary to adequately show possession
of the entire genus. Id., at 1125, at 1791. Additionally, there is no support if
the specification specifically distinguishes the prior art as inferior and touts
the advantages of the species. Such statements make clear that the written
description discloses only the species and nothing broader. Id.
As a first matter, we interpret the clause “incorporated into the
polymer base chain” as modifying both the dye chromophore and the
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