Appeal No. 1997-3047
Application 08/480,152
to fluoxetine hydrochloride, to treat depression.” See Lilly,
222 F.3d at 986-87, 55 USPQ2d at 1618. According to the
court:
The only discernible difference between claim 1 of
the ‘895 patent and claim 7 of the ‘549 patent is
that the former addresses the treatment of
depression in humans while the latter addresses the
treatment of serotonin uptake in animals. Humans
are a species of the animal genus, and depression is
a species ailment of the genus of ailments caused by
defective serotonin uptake. Our case law firmly
establishes that a later genus claim is not
patentable over an earlier species claim.
Lilly, 222 F.3d 987, 55 USPQ2d 1619.
Thus, contrary to appellant’s argument, Lilly is not
inconsistent with Stanley and Thomson-Houston. Stanley and
Thomson-Houston involved the situation in which a later filed
application claiming a specie within a genus issues before an
earlier filed application which claims the genus. In both of
those cases, the courts held that the specie claims could not
be used to reject claims to the genus in an obviousness-type
double patenting rejection. The court in Stanley indicated
that prior courts applied a two-way test for obviousness-type
double patenting in such a situation. See Stanley, 214 F.2d
at 155, 102 F.2d 238. Appellant in the present case has not
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