Appeal No. 2001-1586 Page 9
Application No. 08/402,394
the meaning of 35 U.S.C. § 102(b). Id., 301 F.2d at 681, 133 USPQ at 279. However,
the court went on to describe what it termed “specific preferences” for the substituents
of the chemical compounds described in the applied reference, Karrer. The court
concluded that it was their “opinion that the pattern of Karrer’s specific preferences in
connection with his generic formula constitutes a description of a definite and limited
class of compounds.” Id. 301 F.2d at 681, 133 USPQ at 280. The court concluded:
We think the Karrer patent, as a printed publication, describes to one
skilled in this art not only the broad class but also this much more limited class
within that broad class, and we think it is immaterial that Karrer did not expressly
spell out the limited classes as we have done here, it is our opinion that one
skilled in this art would, on reading the Karrer patent, at once envisage each
member of this limited class, even though this skilled person might not at once
define in his mind the formal boundaries of the class as we have done here.
Id. .
We believe the examiner and appellants need to read Markussen ‘212 very
carefully in light of Petering. Markussen ‘212 states that preferred insulin precursors
includes those where m=1, n is most preferably 1-3 or 1-2 and that X is preferably Ala,
Ser and Thr, X being equal or different. Thus, it may be that Markussen ‘212 is
describing a very limited subgenus of compounds as follows:
The structural formula B(1-29)-(Xn-Y)m¯A(1-21) wherein m=1, n =1 or 2, X = Ala, Ser,
Thr, X being equal or different, Y = Lys or Arg defines two subgenus, i.e.,
B(1-29) (Xn-Lys) A(1-21) and B(1-29) (Xn-Arg)A(1-21) wherein n = 1 or 2, X = Ala, Ser,
Thr with X being equal or different.
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