Appeal No. 97-1278
Application No. 08/046,286
render obvious the presently claimed compounds because "where
there is a large genus in a patent, it is submitted that, in
the absence of direction to a smaller portion thereof, the
smaller portion is not obvious" (page 3 of principal Brief).
For legal authority, appellants cite In re Jones, 958 F.2d
347, 21 USPQ 1941 (Fed. Cir. 1992). Appellants maintain that
in order to obtain compounds within the scope of the appealed
claims:
[I]t is necessary to select, from the disclosure of
Rieger, not only structures II or V, from among the
eight structures given as the second component of
the liquid crystalline phase by patentees, but also
to select, for patentee's "R", alkenyl from alkyl,
oxaalkyl, fluoroalkyl or alkenyl, and, for the
present claim 11, to select for "X" fluoro from
among fluoro, chloro, trifluoromethyl,
trifluoromethoxy and -OCHF . [Page 3 of principal
2
Brief].
We are not persuaded by appellants' argument since,
contrary to appellants' characterization of Rieger, we find a
clear direction in claim 1 of Rieger to select compounds
within the scope of the appealed claims. To wit, the
structural formulae of II and V provide an express disclosure
of a somewhat larger genus than the claimed genus, and the
selection of formulae II and V requires a selection of only
two out of seven, or less than one of four. Also, by claiming
-3-
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