Interference No. 103,675
various counts in this proceeding literally "describes", in the sense
of the statute, any compound within the scope of the counts in this
proceeding. Indeed, Chen et al.'s earlier filed applications are
entitled "Fluoro taxols" and describe the fluorination of taxol with
DAST, a well-known fluorinating compound. The applications describe
obtaining only "- and ß-isomers of 7-fluorotaxol derivatives and
mixtures of said isomers and not 7,8-cyclopropataxols. Thus, none of
appellants' earlier filed applications satisfies the "written
description" requirement of 35 U.S.C. § 112, first paragraph, for an
embodiment within any of the counts in a literal sense.
Based on a theory of inherency, Chen et al. argue that
whatever the nature of the compounds produced by said examples in
their first filed application, the compounds prepared in the later
filed application must be the same as the compounds prepared in the
earlier filed applications because the examples describe the same
procedures. According to Chen et al., Examples 5 and 6 of their
earlier filed applications correspond exactly to Examples 22 and 23 of
their involved patent in this interference. Based on the subsequent
analysis in 1996 of compounds allegedly produced by exactly the same
procedures as in said examples from the earlier filed applications,
Chen et al. argue they have established that notwithstanding that the
compounds were initially improperly identified, the examples in the
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