Fujikawa is consistent with the principle that description of a genus does not necessarily
provide written description for a particular subgenus contained within the genus. In particular,
Fujikawa was based upon a proposed subgenus which differed from at least one of the preferred
moieties of the described genus. Indeed, the court was presented a subgenus which differed from the
genus for at least two of the six variable moieties described, i.e., R and R . Further, there was no
0
indication that the moieties which differed between the described genus and the claimed subgenus
would be better candidates for substitution than any others. It was upon such facts that the Court held
that the Board did not err in finding that the proposed subgenus was not adequately described.
ii. In re Driscoll7
Driscoll involved an ex parte appeal from the Board which affirmed a rejection of Driscoll’s
claim 13. One issue on appeal involved Driscoll’s claim for benefit of an earlier filing date based on a
series of previously filed applications some of which were continuation-in-part applications. The Board
determined that Driscoll was not entitled to the benefit of the filing dates of the earlier filed applications
as the prior applications did not sufficiently describe Driscoll’s claimed invention. Id. at 1246-47, 195
USPQ 435-436.
Driscoll’s invention related to urea compounds which were described as useful in controlling
undesired plant growth. Claim 13 of Driscoll, the specific claim on appeal, read as follows:
13. A compound of the formula
7562 F.2d 1245, 195 USPQ 434 (CCPA 1977).
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