Ex parte MATHAI MAMMEN and DAVID OARE
Appeal 2008-5874 (BPAI)
Application 10/426,364
Decided: February 4, 2009
Claim at issue was a composition claim. The Office alleged that the claim was not entitled to priority to the priority documents. The BPAI agreed holding that the priority documents did not contain enough "blaze marks" that would have identified the sub-genus based upon the genus that was disclosed in the priority document. "In order to obtain benefit of priority for Appellants’ claim . . ., the skilled artisan would have been required to make a large number of specific selections." They explained "the Specification does not provide the clear blaze marks which would have lead to the genus which is now claimed."
The explained "The skilled artisan would have had to select formula (a) from among the nine formulas disclosed as muscarinic receptor antagonists (FF 1-2). Following that selection, the skilled artisan would have had to select NH for
the B” group (FF 3) from among at least six different possibilities (FF 4-5) where –O- and not NH, is indicated as preferred (FF 6). Among the 662 compounds expressly made in U.S. Application 09/456,170, none of them
selected NH for the B” group (FF 7). The skilled artisan would also have had to select a particular group of
six compounds for the B group (FF 8) with the N in the B group linking to the X group (see claim 52). However, U.S. Application 09/456,170 does not require that the N in the B group function as a linker, though it does teach
that linkage (FF 9-12). Additionally, U.S. Application 09/456,170 teaches a significantly larger genus as possible preferred B groups (FF 12). The skilled artisan would also have been required to select a K” group
as a bond, which is indicated as preferred (FF 13-14) and select the R2 group as formula (iii) from four possible choices (FF 15-16)."
This was too much in view of the Examiner and the BPAI
Case can be found here.
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