Patent Interference No. 103,548
After considering the parties' divergent views on the patentability of Lagrange's
patent claim 29, we remain of the opinion, in light of the facts and the law on
genus/species, that Lagrange patent claim 29 is not anticipated by Konrad claim 4.
Konrad's '851 claims do "not disclose a small recognizable class of compounds
with common properties" (see Petering supra) that include the compounds Lagrange
claims. Konrad provides no reason or guidance that would lead one to narrow the broad
compound genus to a subgenus that would include C2-C4 alkyl N-substituted indolines.
We cannot therefore say that the genus of Konrad claim 4 anticipates Lagrange's
species based on any recognition on the part of Konrad of Lagrange's species. Konrad's
alleged recognition of C0 and C1 alkyl substituents is insufficient to render Konrad claim
4's broad genus anticipatory of the C2-C4 alkyl N-substituted indolines of Lagrange
patent (and reissue) claim 4.29
29 Compare with In re Taub. Rauser was awarded priority to a count broadly covering steroids. Award of
priority was based on evidence of priority with respect to a hydrogen species only. Because Taub did not
meet its burden of showing they were first inventors as to the hydrogen species, Taub was not
determined to be the first inventors of the subject matter of the count. Subsequently, Taub sought claims
covering a fluoro species. However, the examiner rejected on anticipation grounds the claims to the fluoro
species over the lost count. On appeal, the Court addressed the anticipation rejection with respect to both
§ 102(a) and the concept of "domination" by the count but reversed the rejection. Instead, the Court
decided that it was "necessary to remand the case for a full consideration of the issue ... the
determination of whether the 9α- fluoro species is obvious over the 9-hydrogen species of the count..."
See Taub at 389.
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