Interference No. 103,605
927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991), cert.
denied, 112 S.Ct. 169. Further, conception of a genus is not
generally sufficient to establish conception of every species or
subgenus within the scope of the genus. Tucker v. Natta, 171
USPQ 494, 498 (Bd. Pat. App. & Int. 1971); Davidson v. Carpenter,
123 USPQ 171, 173 (Bd. Pat. App. & Int. 1959). In this light,
viewing Yamada’s prior applications in terms of a “conception”
approach, we are even more convinced that they fail to reasonably
convey to persons skilled in the art that, as of the filing dates
thereof, Yamada had possession of, i.e., had specifically
conceived of, the two amino acid adduct defined in part(b) of
Yamada claim 1.
For all of the foregoing reasons, we hold that Yamada claims
1 and 4 are unpatentable under either 35 U.S.C. § 102(a) or
35 U.S.C. § 103.
JUDGMENT
In view of the foregoing, judgment as to the subject matter
of the sole count in issue is hereby awarded to Yamada et al.,
the senior party patentee.
Accordingly, Yamada et al. are entitled to their patent
claim 2 corresponding to the count but, in view of our holding,
supra, are not entitled to their patent claims 1 and 4
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