Appeal No. 2005-0102 Page 11
Application No. 09/840,787
example, in In re Ruschig, the specification disclosed a genus of “something like half a
million possible compounds,” of which one was claimed. 379 F.2d 990, 993, 154 USPQ
118, 122 (CCPA 1967). The court held that specific claims to single compounds require
some sort of “blaze marks” directing those skilled in the art to those particular
compounds. See id. at 993, 154 USPQ at 122.
The court has since applied the Ruschig test to inventions other than chemical
compounds. For example, in Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,
56 USPQ2d 1481 (Fed. Cir. 2000), the invention was a method of treating pain by
administering a dose of medicine that met specified pharmacokinetic parameters. The
court held that the specified combination of parameters was not adequately disclosed:
“As Ruschig makes clear, one cannot disclose a forest in the original application, and
then later pick a tree out of the forest and say ‘here is my invention.’ In order to satisfy
the written description requirement, the blaze marks directing the skilled artisan to that
tree must be in the originally filed disclosure.” Id. at 1326-27, 56 USPQ2d at 1486.
This case differs from Ruschig and Purdue Pharma in that there is no dispute that
the particular compound of claim 2 is adequately described.3 The same issue arises,
however, in considering whether the use of that compound in diagnosing lung cancer is
disclosed adequately in the specification, such that the Lal declaration could be
considered to support a disclosed utility, or whether the specification’s disclosure is so
inadequate that the utility must be considered to be disclosed for the first time in the
declaration.
3 We have some doubts, however, about whether claims 14 and 21 are adequately described. If this
application is subject to further prosecution, the examiner should consider whether claims 14 and 21, as
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