With respect to Fujikawa’s contention that Wattanasin mentioned each substituent recited in the
proposed count, the Federal Circuit stated:
Clearly, however, just because a moiety is listed as one possible choice for one position
does not mean there is ipsis verbis support for every species or sub- genus that
chooses that moiety. Were this the case, a "laundry list" disclosure of every possible
moiety for every possible position would constitute a written description of every
species in the genus. This cannot be because such a disclosure would not "reasonably
lead" those skilled in the art to any particular species. We therefore reject Fujikawa's
argument on this point.
Id. at 1571, 39 USPQ2d at 1905. Additionally, the Federal Circuit noted that Fujikawa’s proposed
sub-genus diverged from Wattanasin’s preferred elements. Specifically, the court stated:
As the Board pointed out, Fujikawa's proposed sub-genus diverges from Wattanasin's
preferred elements at least with respect to position R. Although, in hindsight, the
substitution of cyclopropyl for isopropyl might seem simple and foreseeable,
Wattanasin's disclosure provides no indication that position R would be a better
candidate for substitution than any other. Thus, faced with Wattanasin's
disclosure, it was not clear error to hold that one of ordinary skill would not be led to
Fujikawa's sub-genus in particular.
Id., emphasis added. Furthermore, the Federal Circuit compared Fujikawa’s appeal to that recited in
In re Ruschig stating:6
Were we to extend Ruschig's metaphor to this case, we would say that it is easy to
bypass a tree in the forest, even one that lies close to the trail, unless the point at which
one must leave the trail to find the tree is well marked. Wattanasin's preferred
embodiments do blaze a trail through the forest; one that runs close by Fujikawa's
proposed tree. His application, however, does not direct one to the proposed tree in
particular, and does not teach the point at which one should leave the trail to find it.
Id.
6 379 F.2d 990, 994-95, 154 USPQ 118, 122 (CCPA 1967).
23
Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 Next
Last modified: November 3, 2007