Appeal 2007-1610
Application 10/955,833
The CCPA found that it did because its priority application contained
“a broad and complete generic disclosure, coupled with extensive examples
fully supportive of the limited genus now claimed.” Johnson, 558 F.2d at
1018, 194 USPQ at 196.
The CCPA distinguished an earlier case, Welstead, in which an
applicant sought to exclude subject matter from an originally claimed genus,
because in that case the new subgenus was not described in the application
nor was there a description of “[its] species thereof amounting in the
aggregate to the same thing.” Johnson, 558 F.2d at 1018, 194 USPQ at 196.
The CCPA concluded:
The notion that one who fully discloses, and teaches
those skilled in the art how to make and use, a genus and
numerous species therewithin, has somehow failed to disclose,
and teach those skilled in the art how to make and use, that
genus minus two of those species, and has thus failed to satisfy
the requirements of § 112, first paragraph, appears to result
from a hypertechnical application of legalistic prose relating to
that provision of the statute.
Johnson, 558 F.2d at 1019, 194 USPQ at 196.
In this case, there is no description in the Specification – as there was
in Johnson – of a genus minus what has been excluded from the claim. The
Specification describes only one species – purified ethyl 3-mercaptobutyrate
– and no other. There is no detailed description to show that Appellants
possessed the invention which is now claimed.
Appellants argue that “[i]t has always been clear that appellant merely
wishes to claim ethyl 3-mercaptobutyrate in purified form as an organoleptic
agent and not ethyl 3-mercaptobutyrate in a naturally occurring mixture of
compounds or part of a synthetic mixture of compounds which is the same
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