Appeal No. 1997-2167
Application 08/137,444
various substituents and the compounds could also have been
claimed by listing by name each compound embraced by the
formula in claim 1. We see appellants' addition of the
"provisos" as the equivalent of deleting from the claim
particular compounds in the list of compounds for which
appellants originally sought protection. Manifestly, every
compound defined by the formula in claim 1 is "described" in
the sense of the statute. Logically, compounds which remain
after excluding the compounds according to the "provisos" are
part of the originally defined group and are, therefore, also
described.
The action taken by the examiner, if upheld, would be
tantamount to requiring appellants to maintain the scope of
their originally filed claims, even though said claims would
be unpatentable to appellants. Such a requirement does not
reflect the law. See In re Johnson, 558 F.2d 1008, 1019, 194
USPQ 187, 196 (CCPA 1977), wherein the court noted that:
The notion that one who fully discloses, and teaches
those skilled in the art how to make and use, a
genus and numerous species therewithin, has somehow
failed to disclose, and teach those skilled in the
art how to make and use, that genus minus two of
those species, and has failed to satisfy the
requirements of § 112, first paragraph, appears to
result from a hypertechnical application of
legalistic prose relating to that provision of the
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