any of those examples would be led to this lower limit. Fujikawa, 93 F.3d at 1571, 39 USPQ2d at
1905; Oelrich, 666 F.2d at 581, 212 USPQ at 328
48
Engvall relies on the testimony of Drs. Langone and Bergland to establish that the limitation
8
“at least 10 liters/mole” is inherent in Example 1 of the specification. Engvall Reply Brief, pp. 7 to
10. Bergland and Langone each calculated an affinity constant from the data in Engvall’s example
9 49
1. Bergland calculated the value to be 3.7x10 liters per mole. E128, p. 5. Langone using a
9
different method arrived at a value of 5.2 x 10 liters per mole. ER 3515-19, E131. Accepting
these calculations at face value, we fail to see how they would lead the person of ordinary skill in the
8
art to the lower limit of “about 1x10 liters/mole.” While Bergland’s and Langone’s values fall
8
within the scope of the subgenus of the present claims, i.e., they are “at least about 10 liters per
mole,” a subgenus is not necessarily described by a genus encompassing the subgenus and an
embodiment on which the subgenus reads. In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683
(CCPA 1972). Rather, the specification must provide descriptive support for the full scope of the
claimed subject matter. Conservolite, 21 F.3d at 1100, 30 USPQ2d at 1628; Squires, 560 F.2d at 435,
194 USPQ at 52. Precisely how close the original description must come to comply with the
description requirement of Section 112 must be determined on a case-by-case basis." Eiselstein, 93
F.3d at 1039, 34 USPQ2d at 1470. Bergland’s and Langone’s values are 37 and 52 times higher,
respectively, than the lower limit specified in the claims. In our view, these values are simply too
distant from the lower limit of about 1x10 to act as a “blaze mark” to direct the person having8
ordinary skill in the art to “at least about 10 liters/mole.” As noted by the Federal Circuit the search8
48
David moves to suppress Langone’s testimony as untimely and because Engvall’s counsel allegedly
precluded David’s counsel from adequately cross-examining Langone by instructing the witness not to answer certain
questions. David et al. Motion to Suppress Evidence (Paper 331), pp. 8-12. David’s motion does not establish that
Langone’s testimony was actually untimely or improper. All David has provided is conclusory statements. In addition,
the refusal to answer certain questions by Langone goes to the weight of the testimony not to its admissibility. Land v.
Regan, 342 F.2d 92, 101, 144 USPQ 661, 669 (CCPA 1965). The motion as to Langone’s testimony is denied.
49
The designation“E” followed by a number is a reference to Engvall’s exhibits and the exhibit number.
E.g., E128 refers to Engvall Exhibit 128. The designation “ER” followed by a number refers to the Engvall Record and
the specific page number of the record. The designation “DX” followed by a number refers to David’s exhibits. The
reference “DR” followed by a number refers to the David Record and the specific page number. The reference to
“DCX” refers to David Cross Exhibits and the exhibit number.
23
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007