Interference 105,039 Paper No. 28
Andree v. Klintz Page 21
No interference-in-fact between Klintz's genus claims and
Andree's subgenus claims corresponding to Count 1
We must now determine whether there is interfering subject
matter between Klintz's remaining genus claims corresponding to
Count 1, namely, claims 1-5, 7, 12, 13, 15, 16, 26-28, 30, 36,
37, 39, 40, 43, and 45-51, and Andree's claims 1-4 and 6. We
have found that Klintz's disclosure contains no "blaze marks" or
direction to those skilled in the art that would lead them to
conclude that Klintz was "in possession" of that particular
subgenus of compounds when its application was filed.
Accordingly, it follows that Klintz's generic claims, taken as
prior art, do not anticipate Andree's claims that correspond to
Count 1. Cf. In re Arkley, 455 F.2d 586, S87, 172 USPQ 524, 526
(CCPA 1972) (for a proper anticipation rejection, the reference
"must clearly and unequivocally disclose the claimed compound or
direct those skilled in the art to the compound without any need
for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference.") Moreover, considering the astronomical size of the
genus of compounds and the lack of guidance towards selecting the
relatively small subgenus claimed by Andree, we find that there
is no motivation to pick and choose amongst the myriad
possibilities to arrive at the subgenus. Thus, we hold that
there is no prima facie case of obviousness of any of Andree's
claims currently denominated as corresponding to Count 1.
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