Appeal No. 1996-2910
Application 07/825,488
the ambit of the genus.” That case involved a generic prior art disclosure embracing
seven compounds. The court held that the genus “embrace[d] a very limited number of
compounds closely related to one another in structure” and “led inevitably to the
conclusion that the reference provide[d] a description of those compounds just as
surely as if they were identified in the reference by name.” In re Schaumann, 572 F.2d
at 1316-17, 197 USPQ at 9. Under this reasoning, Van Lommen’s disclosure of
compound 84, together with its designation “AB,” appears to describe the individual
RSSS, SRRR, RSRR and SRSS stereoisomers “just as surely as if they were identified
in the reference by name.” On return of this application, the examiner should consider
whether a person having ordinary skill in the art would have envisioned each individual
stereoisomer (RSSS, SRRR, RSRR, SRSS) in light of Van Lommen’s disclosure of
compound 84; and whether Van Lommen constitutes an enabling disclosure, i.e., puts
a person having ordinary skill in possession of each stereoisomer.
Appellants, on the other hand, cite In re May, 574 F.2d 1082, 1090, 197 USPQ
601, 607 (CCPA 1978) for the proposition that “the novelty of an optical isomer is not
negated by the prior art disclosure of its racemate.” According to appellants, “a
reasonable interpretation of the holding in May et al. is that the disclosure in the prior
art of a base compound that has stereoisomeric configurations is not an anticipation of
particular stereoisomers of that base compound.” See Appendix II, accompanying
appellants’ main Brief, page 29, last paragraph.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007