Interference 105,039 Paper No. 28
Andree v. Klintz Page 19
is much much more limited in claim 53 than in original claim 1.
None of the remaining original claims identify any particular W
substituent in combination with R' = cyano. We conclude that the
original claims do not themselves disclose or suggest the
particular subset of para-cyano, meta-substituent species claimed
in claim 53 as a distinct set of compounds.
Moreover, the body of the specification does not appear to
contain any suggestions for the combinations of substituents in
single 3-phenyluracil compounds as recited in claim 53. The only
specific discussion of the cyano group in the Klintz
specification appears to be at pages 59-60, in a section entitled
"Substitution of a halogen atom in the phenyl moiety of the
substituted 3-phenyluracils I (R' = halogen) by the cyano group."
In that section, as pointed out by Dr. Drewes, an expert
testifying on behalf of Andree, there is no further limitation or
specific identification of meta (W) groups. (Andree preliminary
motion 1 at 23, quoting Exhibit 2013, 118.) (These remarks apply
equally to the disclosure provided by original claim 19, part c),
discussed ante. Thus, the two disclosures are merely
cumulative.)
Dr. Drewes also identifies disclosure at pages 36-38 of
"particularly preferred" compounds (I-1 through 1-24). (-Td.) As
Dr. Drewes observes, all of these compounds have Ri = chloro,
-Cl, and all may have any of the W groups listed at pages 38-55
of the Klintz specification. (-Td.) Although Dr. Drewes does not
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