Ex Parte Dewis et al - Page 7

                  Appeal 2007-1610                                                                                         
                  Application 10/955,833                                                                                   
                  occurring mixture from which ethyl 3-mercaptobutyrate was originally                                     
                  identified.                                                                                              
                         Granted, the purified ethyl 3-mercaptobutyrate described in the                                   
                  application is “not a part of a naturally occurring mixture of compounds.”                               
                  However, what Appellants invented is a “purified” compound that, when                                    
                  introduced into a foodstuff, imparts a unique flavor to it.  The only                                    
                  disclosure with respect to naturally occurring mixtures is that the                                      
                  concentration of ethyl 3-mercaptobutyrate is too low for it to be isolated                               
                  from mango (Spec. 6: 10-12).  As a consequence, ethyl 3-mercaptobutyrate                                 
                  was chemically synthesized – the form which is characterized in the                                      
                  Specification as “purified.”  In sum, we agree with the Examiner that claim 7                            
                  lacks a written description in the application.                                                          
                         Our decision is consistent with In re Johnson and Farnham, 558 F.2d                               
                  1008, 194 USPQ 187 (CCPA 1977), a CCPA case which dealt with                                             
                  exclusionary language in a claim that was not present in the application upon                            
                  which priority was based.  In Johnson, the applicant was attempting to                                   
                  narrow the scope of a claimed genus of compounds by excluding two                                        
                  species which had been lost in an interference.  The Examiner, in a rejection                            
                  affirmed by the Board of Appeals, asserted that the claims were not entitled                             
                  to the 1963 filing date of the application because the claimed subject matter                            
                  was not described in it as required by 35 U.S.C. § 112, first paragraph.  The                            
                  CCPA reversed.  “The only inquiry is whether, after exclusion from the                                   
                  original claims of two species specifically disclosed in the 1963 application,                           
                  the 1963 disclosure satisfies § 112, first paragraph, for the ‘limited’ genus                            
                  now claimed.”  Johnson, 558 F.2d at 1017-1018, 194 USPQ at 195.                                          



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