Appeal 2007-1610
Application 10/955,833
an analysis of [a solvent extract of] mango” (Spec. 5: 37 to 38). Ethyl 3-
mercaptobutyrate is stated to be “present at such low concentrations in
mango that it cannot be isolated from the fruit in a commercially viable
way” (Spec. 6: 10-12). Instead, Appellants describe the chemical synthesis
of ethyl 3-mercaptobuyrate in a “purified form, unaccompanied by
substances of natural origin present in mango” (Spec. 4: 35 to 5: 2) and
shows that it acts as a beneficial flavorant (Spec. 38-39 (Example 2)). Thus,
Appellants’ invention is the discovery that purified ethyl 3-mercaptobutyrate
acts as a flavoring when introduced into foodstuffs.
The written description must be of sufficient detail to show possession
of the full scope of the invention. Pandrol USA LP v. Airboss Railway
Products Inc., 424 F.3d 1161, 1165, 76 USPQ2d 1524, 1527 (Fed. Cir.
2005). In this case, naturally occurring mixtures are excluded from the
claims, but that leaves the claim open to everything else that contains ethyl
3-mercaptobutyrate – including any composition, however modified that it is
no longer naturally occurring.1 In our opinion, such a claim scope is not
justified nor drawn to what Appellants invented. The invention described in
the Specification is “purified” ethyl 3-mercaptobutyrate “unaccompanied by
substances of natural origin present in mango” (Spec. 4: 35 to 5: 2) as a
novel flavoring or perfuming agent. This is the only invention described in
the Specification. There is no detail in the Specification that shows that
Appellants possessed compositions of a different scope, let alone of an
intermediate scope to cover mixtures of less complexity than the naturally-
1 Such compositions would include, for example, less complex compositions
derived from naturally-occurring mixtures by fractionation, extraction, and
other processing steps.
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