Appeal No. 2000-0827
Application 08/466,104
disclosure. This does not constitute support for each
compound individually when separately claimed. . . .[ 2]
. . . It is an old custom in the woods to mark
trails by making blaze marks on the trees. It is no
help in finding a trail or in finding one's way through
the woods where the trails have disappeared—or have not
been made, which is more likely the case here—to be
confronted simply by a large number of unmarked trees.
Appellants are pointing to trees. We are looking for
blaze marks which single out particular trees. We see
none.
379 F.2d at 994-95, 154 USPQ at 122. The rejection is explained
as follows:
In the instant case, Applicant did provide written
description [support] for the three specific gases that
are now claimed since they were named as part of a long
list of specifically named compounds that would be
useful in the invention. However, the instant claims
are drawn to a composition wherein each gas is combined
with a specific sub-genus of shell material. The
claim[-]designated shell material, human protein, was
also described in the specification as part of a large
number of shell materials that may be used. Thus, to
arrive at the claim[-]designated invention, the artisan
must pull a specific gas from one list and pair it with
a specific shell material from another list.
Answer at 4. Furthermore, quoting In re Winkhaus, 527 F.2d 637,
640, 188 USPQ 129, 131 (CCPA 1975)( "That a person skilled in the
art might realize from reading the disclosure that such a step is
possible is not a sufficient indication to that person that that
step is part of Appellants' invention. Such an indication is the
2 The Answer quotes the headnote based on this passage
rather than the passage itself.
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