Interference 10S,039 Paper No. 28
Andree v. Klintz Page 16
Id. The inquiry is factual and must be assessed on a
case-by-case basis. 1d. Put another way, there must be "guides"
or "blaze marks" in the original disclosure that point towards
the now-claimed invention. Fujikawa v. Wattanasin, 93 F.3d 1559,
1570, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) ("In the absence of
such blaze marks, simply describing a large genus of compounds is
not sufficient to satisfy the written description requirement as
to particular species of sub-genuses.11); In re Ruschig, 379 F.2d
990, 995, 154 USPQ 118, 122 (CCPA 1967).
Count 1, the genus and subgenus claims
written description of subgenus claims 53-55
We begin our inquiry by comparing Klintz claim 53 with the
disclosure in its national stage application, 08/211,067, which
appears to be identical to its PCT application. The generic
disclosure at page 1, 1. 3 through page 6, 1. 1, appears to be
identical to original claim 1 at pages 140 through 145, 1. 1.
(Exhibit 2014.) For convenience, we refer principally to the
original claims, which are attached to this decision as
Appendix 1. Cf. In re Koller, 204 USPQ 702, 706 (CCPA 1980)
("original claims constitute their own description. Later added
claims of similar scope and wording are described thereby"
(citation omitted).)
Andree maintains that there are two critical substituents,
the combination of which has not been adequately described.
Andree has not argued that any of the other substituents are
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