Enabling Disclosure Does Not Give Priority To Later-Filed Genus Claim When Operability Of Species Not Specifically Disclosed Is Unpredictable

In Re Curtis, ___ F.3d ___, ___ USPQ2d ____ (Fed. Cir. Jan. 6, 2004) (CLEVENGER, Dyk, Prost) (BPAI)*
KEY WORDS: WRITTEN DESCRIPTION, PREDICTABILITY, ENABLEMENT, OPERABILITY, PRIORITY
Fed Cir affirms PTO’s rejection of claims for coated dental floss over foreign counterpart that issued after original application but before CIP application. The original application disclosed Teflon floss caoted with a microcrystalline wax (“MCW”), while the CIP claimed a Teflon floss with a coating not limited to MCW. The CIP was not entitled to the priority of the original application.
Written Description: “Claims found in a later-filed application are entitled to the filing date of an earlier application if, inter alia, the disclosure in the earlier application provides an adequate written description of the later-filed claims under 35 U.S.C. section 112, 1.” In the original application here, Curtis spoke only of MCW as a suitable coating, and disclosed no other coating. During prosecution, Curtis told the PTO that MCW was the only coating he know of that adhered to Teflon and gave the desired amount of friction to dental floss. Curtis' declarations averring that disclosure of the properties of different types of coatings support broad claims covering Teflon covered in any of those coating, cannot overcome the inventors’ focus on MCW as the only applicable coating.
Unpredictability: In re Smythe is distinguishable because, in that case, the original disclosure of using an inert gas as a segmentizing medium supported the later claim to an inert fluid (covering both gas and liquid), since there was no unpredictability to a POSITA about whether a liquid would work in the disclosed system. Here, a disclosure that MCW adheres to Teflon and makes the resulting floss less slippery does not make predictable the ability of other coatings to provide the same result -- in other words, there is “unpredictability in performance of certain species or subcombinations other than those specifically enumerated.” This does not mean that a patentee has to list every species in the specification to be able to claim the genus later, the question instead is if a POSITA, having read the specification, would have the later-claimed genus “naturally occur” to her. In this case, “the specification unequivocally identifies the species as unique and different” so “it cannot convey the knowledge that the overall genus has the same qualities, regardless of the knowledge of those skilled in the art.”
Written Description is Separate from Enablement: The specification does not convey any other appropriate coatings, so it does not matter that it may be easy to discover that other coatings would would be appropriate species of the later-claimed genus. “[C]onclusive evidence of a claim’s enablement is not equally conclusive of that claim’s satisfactory written description. . . . [A] patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when, as is the case here, the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed.”
Decision

[This summary was written by F&R associate Dina Grinshpun]