Patent Interference No. 103,548
USPQ 274, 282 (CCPA 1965), indicates that the Petering finding "is not appropriate
where the prior art does not disclose a small recognizable class of compounds with
common properties" (LB 26). Lagrange also cites Merck & Co., Inc. v. Biocraft
Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989), to
reiterate the point that a generic formula is anticipatory of a claimed species only if the
reference also discloses specific preferences leading one to a smaller genus that
describes the claimed species. Lastly, Lagrange discusses In re Taub, 348 F.2d 556,
146 USPQ 384 (CCPA 1965) stating that "In re Taub is only pertinent to the present
case to the extent it implies that a very small genus ... may possibly anticipate a
species" (LB 27).
Konrad (KOB 19) argues that
the fact that a claimed subgenus or compound may be encompassed by a generic
formula does not by itself render the subgenus or compound anticipated. On the
other hand, a genus may be so small that, taken together with other facts, it
describes or anticipates a claimed subgenus or compound within the genus.
Konrad argues that Taub supports the view that a genus may anticipate a species and
that "[t]his is very similar to the present case. The court held that the subgenus only
amounted to a difference in degree. In re Taub, 348 F.2d 556, 560, 146 USPQ 384,
387." (KOB 19). To support its argument that the compounds of Lagrange claim 29
differ from the Konrad subgenus only by degree, Konrad points out that Konrad
discloses
1) C0 as a preferred compound (KOB 5, paragraph 15); and,
2) the genus of C1-4 alkyl-substituted indolines (KOB 1-2, paragraph 3).
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