Interference No. 104,696 Paper 65
Khavari v. Tang Page 6
955, 971, 58 USPQ2d 1869, 1880 (Fed. Cir. 2001). Consequently, Khavari's invention is the
same as Tang's viewed in this "way" (i.e., from Khavari's claim to Tang's). The contested
question is the other "way", that is, whether Tang's claim 167 would, assuming its subject matter
were prior art, have anticipated or rendered obvious the subject matter of Khavari's claim 1.
A large genus does not ordinarily anticipate a species, but a small genus might anticipate
even unnamed species. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368,
1380, 58 USPQ2d 1508, 1517 (Fed. Cir. 2001). The differences Khavari has identified are the
presence of hair and the absence of chemical or mechanical irritant. Tang's claim 167 is directed
to use on the skin of a mammal without further restriction regarding the skin. Khavari claim I is
restricted to use on the skin of a vertebrate where the skin has hair. Hair is a defining
characteristic of mammalian skin, although not all mammalian skin has hair. Tang's claim 167
restriction to mammals thus meets the "vertebrate" requirement of Khavari's claim I and provides
the small genus of treating either hirsute or hairless skin.
Khavari notes several points in Tang's specification that indicate the skin has been
shaved.' Assuming these examples are representative of Tang's entire disclosure, they at most
indicate that Tang has a claim encompassing subject matter not expressly disclosed in its
specification. Assuming that to be true, Khavari's remedy would have been to file a motion
alleging a violation of 35 U.S.C. 112.' It might well be true that if Tang's claims were limited to
2 Note that Tang's involved, independent claim 148, which has a parallel requirement for mammalian skin, is
further limited in claim 149 to require shaving at the administration site. By implication (and law, 35 U.S.C. 112[41),
claim 149 indicates that shaving is not a necessary part of the invention.
3 As Khavari acknowledges, it was expressly advised that a motion for no interference-in-fact is not the place to
attack the patentability of the other party's claims (Paper 24 at 7). Lack of written description for a provoker's interfering
claim, like no interference-in-fact and a bar under 35 U.S.C. 135(b), can be a threshold issue, but it must be properly
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