Patent Interference No. 103,548
is a suggestion to narrow the broad disclosure. Petering, 301 F.2d at 681, 133 USPQ at
279. The parties disagree, however, on whether Konrad provides sufficient suggestion
to narrow Konrad's class of indolines to a sufficiently small genus that anticipates
Lagrange's C2-C4 alkyl N-substituted indolines.
Where there is a broad generic disclosure in a reference that encompasses a
claim, it may not constitute a “description” of that claim within the meaning of 35 U.S.C.
§ 102(b) unless there is a suggestion in the reference to narrow the broad disclosure.
See In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 279 (CCPA 1962). However, ”it
is not the mere number of compounds in this limited class which is significant here but,
rather the total circumstances involved”, Petering, 301 F.2d at 681-82, 133 USPQ at
280 (the court was able to narrow the prior art disclosure to “only” 20 species).
Lagrange concedes that Konrad teaches a generic chemical formula
encompassing a vast number of indolines but submits that Konrad does not provide
information leading to a smaller genus that would anticipate the claimed species.
In that regard, Lagrange argues that "the fact that a claimed subgenus may be
encompassed by a generic formula does not by itself render the subgenus or compound
anticipated" (LB 26). According to Lagrange, the court in In re Petering, 301 F.2d 676,
681, 133 USPQ 275, 279-80 (CCPA 1962), found claims to a species of chemical
compounds anticipated by a prior art generic chemical formula encompassing a vast
number of compounds but only because information to reduce the vast number of
compounds to a number that "described" the claimed compounds was also disclosed.
According to Lagrange, consistent with Petering, In re Ruschig, 343 F.2d 965, 974, 145
19
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