The Board declined to grant Driscoll priority to the earlier filed application. Specifically, the
Board concluded that:
In view of the relatively large number of possible values for R, and in the absence of
anything in the disclosure to direct one specifically to the subgenus where R is
alkylsulfonyl, we cannot agree with appellant’s position.
Id. at 1248, 195 USPQ at 436.
The Court of Customs and Patent Appeals (CCPA), however, did not agree with the Board’s
analysis. In particular, the CCPA cited Driscoll’s earlier applications as describing the claimed
thiadiazole ureas as being particularly effective when containing an organic substituent in the 5-position
of the thiadiazole portion. Thus, the CCPA reasoned that:8
[T]he focus is unquestionably on the substituents at the 5-position of the thiadiazole
moiety, and not on the substituents of the urea moiety. Accordingly, one skilled in the
art would regard the structural formula of S.N.782,756 as signifying that no matter
which member of the R group is present on the thiadiazole moiety, the urea moiety may
be substituted or unsubstituted.
Id. at 1249, 195 USPQ at 437. Accordingly, it followed that the earlier formula described the subject
matter of fourteen distinct classes of compounds including the one recited in Driscoll’s claim 13. Id. at
1249, 195 USPQ at 437-438. Thus, the CCPA reasoned that the exact subgenus claimed was clearly
discernable in the generalized formula of the earlier application. Id. at 1249, 195 USPQ at 438.
Indeed, the Court made it clear that the Driscoll appeal involved a “hypertechnical application” of the
written description requirement for which it was impossible to imagine any public purpose being served.
Id.
1 2
8In other words, it did not matter to Driscoll what particular substituents were used for R , R ,
R and X so long as R was one of the defined Markush substituents.3
26
Page: Previous 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 Next
Last modified: November 3, 2007