bromide, and long chain (at least 12 carbon atoms) fatty acid-containing organic
Werner complexes.
Id. at 1393-94, 173 USPQ at 682. Moreover, Smith stated that it would have been obvious to one
skilled in the art that the organic compounds recited above are monomeric and have a hydrocarbon
structure having at least 8 carbon atoms, except for the benzene carboxylic acid. From this, Smith
asserted that the claimed invention is a subgenus of the 1947 description as the claims “delineate the
invention more specifically.” Id.
In reviewing Smith’s 1947 application, the CCPA concluded that the mere disclosure of a
genus and a species within a subgenus is not necessarily a sufficient description of the subgenus.
Specifically, the CCPA held that:
Precisely how close the description must come to comply with § 112 must be left to
case-by-case development. . . . Whatever may be the viability of an
inductive-deductive approach to arriving at a claimed subgenus, it cannot be said that
such a subgenus is necessarily always implicitly described by a genus encompassing it
and a species upon which it reads.
Id. at 1395, 173 USPQ at 683. Further, the CCPA found nothing wrong with the principle that certain
circumstances may operate to defeat the patentability of a narrow, but not a broader, claim. Id.
2. Shiokawa’s Earlier Applications are not a Constructive Reduction to Practice
of the Subject Matter of Count 1
As recognized by Shiokawa, “in order to gain the benefit of the filing dates of its earlier filed
applications for Count 1, Shiokawa must show that its parent U.S. applications and its foreign priority
application each contains a constructive reduction to practice of Count 1.” (Shiokawa Corrected
Preliminary Motion 1, Paper No. 74, p. 8). Shiokawa alleges a constructive reduction to practice of
the subject matter of Count 1. Specifically, Shiokawa alleges that:
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