Disclosure of species can support genus claims

Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).

Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent.  The Patent Board (BPAI) rejected Bilstad’s claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).

On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board “failed to apply the appropriate standard in its analysis of whether Bilstad’s application included sufficient written description to support the count under 35 U.S.C. ยง 112.”

This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).