Interference No. 104,733
Page No. 26.
found at pages 48,433-48,434 of the Notice of Final Rules, 49 Fed. Reg. 48,416 (Dec.
12, 1984). Provided below are the full paragraphs ((1) & (2)) from which Lilly's quoted
material is derived:
(1) With respect to paragraph (1) of the comment, the standard of
patentability will not be ar)Dlied "on a mutual basis." Thus, if a
species is patentable over a genus, the species is a ffseparate
patentable invention" from the genus. Compare In re Taub, 348
F.2d 556, 146 USPQ 384 (CCPA 1965) (fluorine species might be
patentable over genus of Markush group of hydrogen and
halogen). A first count to a genus and a second count to a species
which is patentable over the genus may properly appear in an
interference. See e.g., Example 4. The comment suggests that if
.'such mutuality is not applied * * * then a number of irreconcilable
anomalies * * * will be manifest." The urged "irreconcilable
anomalies" are not readily apparent to the PTO.
(Fed. Reg., p. 48433, underline emphasis added denotes Lilly's cited commentary, bold
emphasis added to highlight application of Rule 601 (n) for genus/species situations).
(2) Analysis of Commentatoes Example A. Example A does not describe any
practice under these rules, because "same patentable invention" and
"separate patentable invention" under ý 1.601 (n) are not intended to be
"amAed in a mutuality sense." Where a first count is to a genus and a
second count is to a species within the scope of the genus, there
may be two counts if the species is separately patentable from the
genus. The species is "invention A" referred to in § 1.601 (n); the genus is
"invention B" referred to in § 1.601(n).
(Fed. Reg., p. 48434, underline emphasis added denotes Lilly's cited commentary, bold
emphasis added to highlight application of Rule 601 (n) for genus/species situations).8
While not specifically mentioned by Lilly, Lilly's relied upon comments were
written in response to questions concerning whether or not the standard of patentability
would be applied on a mutual basis in determining whether to add an additional count.
Each count, of course, must be directed to a separate patentable invention. 37 CFR
§1.601(f). In other words, the comments responded to a question of whether the
USPTO would require that Invention A be separately patentable from Invention B
considered as prior art and Invention B be separately patentable from Invention A
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