Patent Interference No. 103,548
the presumed prior art. There must be no difference between them as viewed by a
person of ordinary skill in the art.
Konrad claim 4 provides for a generic formula that encompasses C2-C4 alkyl N-
substituted indolines but also covers many other indolines. The fact that a claimed
compound may be encompassed by a generic formula does not by itself render that
compound anticipated. See In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir.
1992). Here, given the vast number of indolines encompassed by the Konrad formula,
we are find that Konrad does not describe Lagrange's C2-C4 alkyl N-substituted
indolines. Accordingly, the C2-C4 alkyl N-substituted indolines are not anticipated by
Konrad claim 4.
The parties were requested to brief the anticipation question in light of the
cases27 in the Commissioner's Notice of April 17, 199528, 1174 OG 68 (May 9, 1995),
entitled In re Baird, as well as In re Taub, 348 F.2d 556, 146 USPQ 384 (CCPA 1965).
Both parties have assessed the case law on the subject of genus/species and
agree that a broad generic disclosure that encompasses a claimed invention may
constitute a “description” of that claim within the meaning of 35 U.S.C. § 102(b) if there
27 The cases are: In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re Bell, 991 F.2d 781, 26
USPQ2d 1529 (Fed. Cir. 1993); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992; Merck &
Co. v. Biocraft Labs., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA
1964); In re Rosicky, 276 F.2d 656, 125 USPQ 341 (CCPA 1960).
28 From this Notice derived the interim Genus-Species Guidelines to assist Office personnel in examining
claims to a chemical species where a single prior art reference discloses a genus that encompasses the
claimed species (see Commissioner's Notice of February 5, 1997, 1196 OG 37; also Consolidated Listing
of Official Gazette Notices Re-Patent and Trademark Office Practices and Procedures, 1218 OG 110-116
and MPEP 2144.08).
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