Interference No. 104,717 Paper 30
Laudano v. Dana-Farber Cancer Inst., Inc. Page 7
Zletz was in a position much like Laudano in that Zletz was seeking generic claims after having
lost an interference over claims to a species within the genus. As the Zletz decision indicates,
antedating can be an appropriate remedy in such cases.
Zletz also provides a cautionary note, however. The Federal Circuit ultimately decided
that Zletz had not provided antedating support commensurate with the scope it said it was now
claiming. Zletz, 893 F.2d at 323, 13 USPQ2d at 1324; Kyrides, 159 F.2d at 1021-22, 73 USPQ
at 63. We note that Laudano has alleged proofs to a single species outside the scope of counts 4,
6, and 7 to support its generic claims. It is possible, but unusual, for a single species to support a
generic claim in an antedating effort.4
Johnson claims
A much simpler alternative would be to file claims that carve out the lost species. The
Court of Customs and Patent Appeals adopted a very flexible standard for allowing an applicant
to amend its generic claims to exclude the subject matter of a lost count. In re Johnson, 558 F.2d
1008, 1018, 194 USPQ 187, 196 (CCPA 1977). Admittedly this solution would not leave
Laudano with generic claims that dominate DFCI's species, but Laudano would have claims to
everything but the species of the lost counts.
4 If Laudano chooses to rely on additional species in an antedating effort before the examiner, it must take care
not to rely on species that are obvious variants of the subject matter of counts 4, 6, and 7. Laudano could have moved for
a broader version of counts 4, 6, or 7 to encompass its best proofs to such inventions. 37 C.F.R. § 1.633(c)(1); see also
Louis v. Okada, 59 USPQ2d 1073 (BPAI 2001) (explaining how to broaden a count to include best proofs of priority).
Having failed to do so, it cannot rely on such proofs to obtain a dominating claim. 37 C.F.R. § 1.658(c).
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