Issue 170 | March 12, 2004
In re Curtis et al.

The court in In re Curtis et al., No. 03-1215 (Fed. Cir. January 6, 2004), addressed the requirements for establishing the priority of a genus claim based on an earlier claimed species. Curtis et al. appealed a final rejection from the Board of Patent Appeals and Interferences during merged reissue and reexamination proceedings.

Applicants sought allowance of a broader genus claim in a CIP application. The parent application related generally to a dental floss made from at least one polytetrafluoroethylene (PTFE) having a coating capable of enhancing the coefficient of friction, and specifically disclosed that microcrystalline wax (MCW) was the only known suitable friction enhancing coating. The claims in the parent application were limited to specific ranges of denier and coefficient of friction. During the prosecution of the parent, applicants argued that it was surprising that MCW adhered to the porous, high strength PTFE.

During reexamination of the CIP application, applicants sought allowance of new claims having at least one friction enhancing coating that was not limited to a particular denier or coefficient of friction range.

The Board held that the written description in the parent application was not adequate to establish priority. Specifically, the Board found that MCW was the only friction enhancing coating expressly or inherently disclosed in the earlier application.

On appeal, the Federal Circuit affirmed the Board's decision. The Court noted that although the earlier application identified key properties of members of the genus of friction enhancing coatings, the originally filed disclosure was more credible as to what was unexpected and surprising regarding the ability of different materials to adhere to different PTFE filaments. The Court also stated that a description of "how and why" individual species of the genus are operable in an invention will not necessarily provide an adequate written description of the genus of which species are members. The Court added that the relevant inquiry was whether a person of ordinary skill in the art would, after reading the parent application disclosure, "instantly recall" species of the genus of later-claimed friction enhancing coatings already "stored" in their minds.

To view the full decision visit http://www.aplf.org/mailer/Issue170.doc

To discuss this topic further, please feel free to contact the author Michael R. Dzwonczyk, (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC., USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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