Appeal No. 2006-2417 Page 4
Application No. 09/200,791
page 4. It is axiomatic that the disclosure of a species in a reference is sufficient
to prevent a later applicant from obtaining generic claims. In re Gosteli,
872 F.2d 1008, 1010, 10 USPQ2d 1614, 1616 Fed.Cir.1989) (holding that earlier
species invention anticipates later generic claim). Therefore, it would seem clear
that rejections of record turn on our findings as to whether appellants are entitled
to benefit from their claim of priority to the ‘894 patent. As appellants explain it
(Reply Brief, page 2),
[a]ppellants and the [e]xaminer are in agreement that a
major issue in this Appeal is whether or not the instant claims are
entitled to the March 21, 1995 priority date of . . . [the ‘894 patent].
A central issue of contention between the [e]xaminer and
[a]ppellants is whether or not there is sufficient written description
support in the . . . [‘894 patent] to justify a March 21, 1995 priority
date for the instant claims.
Accordingly, as we understand the record, the examiner and appellants agree
that the only way appellants can overcome the examiner's rejections under
35 U.S.C. § 102(b) and § 103 is to remove Behr as prior art. On this record, the
only way appellants can remove the Behr reference is by obtaining the benefit of
the filing date of the ‘894 patent. Accordingly, the dispositive issue before us is
one of priority.
Priority:
We begin by noting that claims found in a later-filed application are entitled
to the filing date of an earlier application if, inter alia, the disclosure in
the earlier application provides an adequate written description of the later-filed
claims under 35 U.S.C. § 112, first paragraph. See Tronzo v. Biomet, Inc.,
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