Interference No. 103,675
inherency are questions of fact7 and Chen et al. have failed to allege
or set forth facts which would support a finding of inherency. Rather,
the facts, as discussed above, support a conclusion that it has not
been established that the cyclopropyl derivatives must necessarily be
produced by the disclosed synthesis.
Further, we do not understand any of the cases on which
movant relies to stand for such a broad proposition as is argued. The
"written description" requirement of the statute serves, in part, as
notice that an applicant for patent was possessed, as of the filing
date of his first filed or earlier application, of the subject matter
later claimed by him in a later filed application. Simply stated,
compounds of the counts in this proceeding were, admittedly, not
literally described in the earlier applications because the inventors
did not appreciate at the time the earlier applications were filed
that the compounds were prepared by the disclosed synthesis. Moreover,
it appears from the evidence proffered by movants, considered in a
light most favorable to their position, that the earlier filed
application describes the preparation of a mixture of compounds rather
than any single compound. There is no evidence which establishes that
a person of ordinary skill in the art, reading the first filed Chen et
7 Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69,
20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991).
36
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