Appeal 2006-2468
Application 10/149,875
(genus) disclosed in Seiden are so broad that one could not
reasonably say that they disclose each and every value (species)
within that range, and therefore, to not teach the present ranges.
For these reasons alone, Appellants respectfully request the
rejection under 35 U.S.C. § 102 be reversed.
Appellants’ arguments are not persuasive. To begin with, it is
significant that Appellants do not specifically address the most preferred
range described in Seiden. This most preferred range (amounts of PFAP and
RCT of about 65 to 95 weight percent and about 5 to about 35 weight
percent, respectively) was relied upon by the Examiner in rejecting the
appealed claims, and the most preferred range represents a small genus that
embraces the claimed range for those ingredients but has not been shown to
substantially deviate from the claimed range. See In re Schaumann,
572 F.2d 312, 316, 197 U.S.P.Q. 5, 9 (CCPA 1978)(prior art preferred genus
which disclosed limited species, inclusive of claimed species, constituted
description of the claimed species within the meaning of 35 U.S.C.
§ 102(b)); In re Petering, 301 F.2d 676, 681, 133 U.S.P.Q. 275, 280 (CCPA
1962) (prior art genus containing only 20 compounds inherently anticipated
a claimed species within the genus because "one skilled in [the] art would
. . . envisage each member" of the genus). Of course, it is well settled that
the disclosure in the prior of art of any value within a claimed range is a
complete description of the claimed range. See In re Wertheim, 541 F.2d
257, 267, 191 U.S.P.Q. 90, 100 (CCPA 1976). Also, see Atlas Powder Co.
v. IRECO Inc., 190 F.3d 1342, 1346, 51 U.S.P.Q.2d 1943, 1945-46 (Fed.
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