Appeal 2007-0686
Reexamination Control 90/004,812
Application 09/810,650
Opinion
In order to satisfy the written description requirement, the disclosure
does not have to provide ipsis verbis support for the claimed subject matter.
Fujikawa v. Wattansin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1904 (Fed.
Cir. 1996).
Clearly, however, just because a moiety is listed as
one possible choice for one position does not mean
there is ipsis verbis support for every species or
subgenus that chooses that moiety. Were this the
case, a "laundry list" disclosure of every possible
moiety for every possible position would constitute
a written description of every species in the genus.
This cannot be because such a disclosure would
not "reasonably lead" those skilled in the art to any
particular species. Id., 93 F.3d at 1571, 39
USPQ2d at 1905.
In In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967), an
original claim was directed to a genus of chemical compounds having a
central benzosulfonylurea structure and two variable substituents attached at
specific sites on that structure, i.e., "wherein R is a member selected from
the group consisting of chlorine and bromine and R2 is a member selected
from the group of alkyl-, alkenyl-, cycloalkyl- and cycloalkylalkyl radicals
containing 2 to 7 carbon atoms." Id., 379 F.2d at 994, 154 USPQ at 121.
The claim on appeal in Ruschig was directed to a compound in which R was
chlorine and R2 was propyl. Id., 379 F.2d at 991, 154 USPQ at 119. The
specification listed n-propylamine and 18 other primary amines which could
be used to form the R2 group. Id., 379 F.2d at 995, 154 USPQ at 122. The
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