Appeal No: 2000-0635
Application No: 08/511,028
We agree with the examiner that a ratio of "at least
1.5:1" encompasses a ratio of "at least 2:1" since a range of
2.0 to some unspecified upper limit falls within a range of
1.5 to some unspecified upper limit. In other words, a ratio
of at least 2:1 is a species of the ratio of at least 1.5:1.
A later genus is not patentable over an earlier species. Eli
Lilly v. Barr Laboratories, ___, 55 USPQ2d 1609, 1619 (Fed.
Cir. 2000).
Applicants argue that the examiner's reasoning ignores
that there is an upper limit for the ratio since the
application claims require that some MNT remain in the
reaction mixture. According to applicants, at the nitric acid
to toluene molar ratio of 2:1 required by Schieb, no MNT would
theoretically be present (Paper 13 at 2).
Applicants' disclosure tends to indicate otherwise. For
example, page 5 of the disclosure states that "[w]hen the
molar ratio of nitric acid to toluene is $ 2.0, MNT is still
present in the nitration reaction mixture". Example 1
discloses a nitrating acid to toluene molar ratio of
5.384:2.692 (or 2:1) resulting in a reaction mixture which is
said to contain residual MNT (Paper 1 (Spec.) at 5). While
it is true that applicants' own disclosure may not be used as
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