Appeal 2007-1941
Application 10/363,159
1 of a rubberized compound and an ethylene-unsaturated carboxylic acid co-
2 polymer. . . .” (Emphasis added.). But the disclosure of a generic invention
3 does not necessarily provide an implicit description of every subgenus or
4 embodiment within the genus. Smith, 458 F2d at 1395, 173 USPQ at 683.
5 The only parts of the written description relating to a repair
6 composition including asphalt is in the discussion of the prior art
7 compositions and methods in the “Background” (Spec. p. 3, l. 31 - p. 4, l.
8 29) and at the end of the written description where applicant touts the
9 benefits of the invention (Spec. p. 21, l. 1 - p. 23, l. 15). The discussion of
10 the prior art is manifestly not applicant’s invention. The discussion of the
11 benefits of the invention, while indicating that the invention is useful in
12 repairing asphalt, does not describe the use of asphalt as part of the repair
13 composition in addition to the copolymer and the rubberized compound.
14 Applicant identifies six preferred embodiments in the written
15 description which are said to “satisfy the limitation of being [sic] ‘not being
16 predominantly asphalt.” Appeal Brief filed August 8, 2006, p. 6. We
17 understand this argument to be that the limitation reads on the six
18 embodiments and therefore supports the limitation. However, none of these
19 embodiments include asphalt. It is of course correct that the phrase “not
20 predominately asphalt” reads on compositions without any asphalt and
21 includes applicant’s six preferred embodiments. However, the fact that the
22 phrase reads on the examples does not mean that the limitation is described.
23 A generic claim necessarily “reads on” every subgenus or species
24 encompassed by the genus. However, the genus does not necessarily
25 describe the subgenus in the sense of 35 U.S.C. § 112, ¶ 1. Smith, 458 F.2d
26 at 1395, 173 USPQ at 683. There is nothing in the six embodiments which
27 provide blazemarks to guide one skilled in the art to incorporate asphalt in
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