Appeal No. 2002-0522 Page 6
Application No. 09/552,543
characteristics of a fluid are what make the segmentizing medium work in this
invention.” 480 F.2d at 1383, 178 USPQ at 284.
The Smythe court made clear that its conclusion was based on the
specific facts of that case. See id. (“Each case must be decided on its own
facts.”). Smythe did not hold that disclosure of a species always provides a
description of an encompassing genus. In fact, the Smythe court pointedly noted
that the facts of that case were distinguished from
other cases, particularly but not necessarily, chemical cases, where
there is unpredictability in performance of certain species or
subcombinations other than those specifically enumerated, [where]
one skilled in the art may be found not to have been placed in
possession of a genus or combination claimed at a later date in the
prosecution of a patent application.
Id. at 1383, 178 USPQ at 284-285. This case falls squarely into the category of
cases that the Smythe court distinguished. See, e.g., In re Fisher, 427 F.2d 833,
839, 166 USPQ 18, 24 (CCPA 1970) (“In cases involving unpredictable factors,
such as most chemical reactions and physiological activity, the scope of
enablement obviously varies inversely with the degree of unpredictability of the
factors involved.”).
In fact, the Federal Circuit recently cited Smythe, along with Fiers v.
Revel, 984 F.2d 1164, 25 USPQ2d 1601 (Fed. Cir. 1993), as authority for the
proposition that a “written description of a chemical genus, like a description of a
chemical species, ‘requires a precise definition, such as by structure, formula,
[or] chemical name,’ of the claimed subject matter sufficient to distinguish it from
other materials.” University of California v. Eli Lilly and Co., 119 F.3d 1559,
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007