came into possession of the invention defined by claim 1 only
after the examiner cited Gras.
There is nothing inherently wrong with limiting a claim
to avoid prior art. And, in fact, applicants often find that
they have claimed subject matter described in the prior art
thereby necessitating a limiting amendment to a claim. As
noted by In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976):
Inventions are constantly made which turn out not to
be patentable, and applicants frequently discover
during the course of prosecution that only a part of
what they invented and originally claimed is
patentable.
But, the subject matter of the claim, as amended, must have
described in the specification, as filed. For example, an
applicant may describe a genus and certain species. A
description of a genus and certain species, however, may not
entitle the applicant to a claim to a subgenus. In re Smith,
458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972).
Applicants rely on the description of a Markush group of
blocking agents to establish factually that their
specification describes blocking agents which do not have a
2,2,6,6-tetramethyl piperidinyl group. But, the Markush would
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