Appeal No. 2002-0522 Page 5
Application No. 09/552,543
Appellants argue that “[t]he skilled artisan reading Applicant’s [sic] parent
specification would clearly and naturally understand that the disclosure at page
10, lines 4-34 is generally applicable to endothelin antagonists as an entire
class—not just the specific endothelin antagonists of formula I.” Appeal Brief,
page 3. Appellants cite In re Smythe, 480 F.2d 1376, 178 USPQ 279 (CCPA
1973), as supporting their position.
This argument is not convincing. Again, the specification describes only
compositions comprising the endothelin antagonists of formula I. Appellants
have pointed to nothing in the specification that would have led those skilled in
the art to conclude that Appellants invented compositions comprising endothelin
antagonists other than those of formula I. See Lockwood, 107 F.3d at 1572, 41
USPQ2d at 1966 (“One shows that one is ‘in possession’ of the invention by
describing the invention, with all its claimed limitations, not that which makes it
obvious.”).
In re Smythe does not support Appellants’ position. In Smythe, the
specification disclosed a process comprising, inter alia, a “segmentizing medium”
that was “air or other gas which is inert to [a] liquid.” 480 F.2d at 1384,
178 USPQ at 280. The claimed process, by contrast, recited the segmentizing
medium as “an inert fluid immiscible with said liquid samples.” See id. The court
reversed the rejection for inadequate written description, even though the claim
term “fluid” was broader than the specification’s “air or other gas,” because “the
specification clearly conveys to one skilled in the art that in this invention the
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