Appeal 2007-1610
Application 10/955,833
occurring mixture from which ethyl 3-mercaptobutyrate was originally
identified.
Granted, the purified ethyl 3-mercaptobutyrate described in the
application is “not a part of a naturally occurring mixture of compounds.”
However, what Appellants invented is a “purified” compound that, when
introduced into a foodstuff, imparts a unique flavor to it. The only
disclosure with respect to naturally occurring mixtures is that the
concentration of ethyl 3-mercaptobutyrate is too low for it to be isolated
from mango (Spec. 6: 10-12). As a consequence, ethyl 3-mercaptobutyrate
was chemically synthesized – the form which is characterized in the
Specification as “purified.” In sum, we agree with the Examiner that claim 7
lacks a written description in the application.
Our decision is consistent with In re Johnson and Farnham, 558 F.2d
1008, 194 USPQ 187 (CCPA 1977), a CCPA case which dealt with
exclusionary language in a claim that was not present in the application upon
which priority was based. In Johnson, the applicant was attempting to
narrow the scope of a claimed genus of compounds by excluding two
species which had been lost in an interference. The Examiner, in a rejection
affirmed by the Board of Appeals, asserted that the claims were not entitled
to the 1963 filing date of the application because the claimed subject matter
was not described in it as required by 35 U.S.C. § 112, first paragraph. The
CCPA reversed. “The only inquiry is whether, after exclusion from the
original claims of two species specifically disclosed in the 1963 application,
the 1963 disclosure satisfies § 112, first paragraph, for the ‘limited’ genus
now claimed.” Johnson, 558 F.2d at 1017-1018, 194 USPQ at 195.
7
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