and each of R , R , R , R , and R is, independently, hydrogen, C alkyl, C alkoxy, trifluoromethyl,1 2 3 4 5 1-4 1-4
fluoro, chloro, phenoxy, benzyloxy, or hydroxy. Id., emphasis added.
Essentially, Fujikawa's proposed sub-genus was directed to compounds in which R was
cyclopropyl and R was 4-fluorophenyl. The other particular constituents recited in Fujikawa's
0
proposed count were adequately described in Wattanasin's application. Id.
The Board noted that Wattanasin preferred methyl and isopropyl for R, rather than cyclopropyl
as in the proposed count. Additionally, it was noted that Wattanasin listed three preferred choices for
R only one of which was 4-fluorophenyl and gave no indication as to any preference between the three
0
preferred choices. Id. The Board recognized that the compounds of the proposed count were not
Wattanasin’s preferred, and that his application contained insufficient “blazemarks” as to what
compounds, other than those disclosed as preferred might be of special interest. Accordingly, the
Board determined that in the absence of appropriate blazemarks, the mere disclosure of a large genus
of compounds was not sufficient to satisfy the written description requirement as to a particular species
or subgenuses. Id. at 1571,
39 USPQ2d at 1905.
The Federal Circuit affirmed. The court characterized the question raised in terms of whether
Wattanasin's application provides adequate direction which reasonably would lead persons skilled in
the art to the sub-genus of the proposed count. Id. at 1570, 39 USPQ2d
at 1904.
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