Appeal No. 2007-1227 Page 4
Application No. 10/416,211
Since for every mole of alkali metal chloride (e.g. NaCI), there are
35.5 g of chlorine, thus, there would be .[0]355 (= 0.001 * 35.5) - 28
(= 0.8 * 35.5) g of chlorine per litre.
Thus, Winters teaches a genus (0.0355 – 28 g/l) that encompasses
appellants’ claimed species (about 0.1 – about 0.5 g/l). It is, however, well
established that the disclosure of a genus in the prior art is not necessarily a
disclosure of every species that is a member of that genus. See, e.g., In re
Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994). On the other
hand, a very small genus can be a disclosure of each species within the genus.
In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962). In our
opinion, however, Winters’ disclosure of chlorine concentration of 0.0355 – 28 g/l
is not so small a genus to anticipate appellants’ claimed range of about 0.1 to
about 0.5 g/l of residual chlorine. Here, the prior art, Winters discloses a range
which is broader than and fully encompasses the specific range claimed by
appellants. Given the considerable difference between the claimed range and
the prior art range we find that Winters fails to describe the range with sufficient
specificity to anticipate appellants’ claimed range. Accordingly, we reverse the
rejection of claims 1 and 3 under 35 U.S.C. § 102 as anticipated by Winters.
Obviousness:
Claims 1 and 3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Winters. Appellants do not separately group or argue their
claims. Therefore, the claims will stand or fall together. 37 CFR
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