IN RE HEINRICH RUSCHIG, WALTER AUMULLER, GERHARD KORGER, HANS WAGNER, JOSEF SCHOLZ AND ALFRED BANDER, 54 C.C.P.A. 1551

Summary

Appellants, inventors of an oral medication for the control of diabetes, appealed the decision of the Patent Office Board of Appeals (Board) affirming the rejection of one claim of their patent application on the ground that the claim was not supported by the disclosure of the application. The court affirmed. The Board had jurisdiction and authority to reopen appellants' patent prosecution and to reject the claim on a new ground. The chemical compound of the claim at issue was not named or identified by formula and the compound could find support only as choices made between the several variables involved. There were no "guides" in the specification that would lead one skilled in the art to the claimed compound. Specific claims to single compounds required reasonably specific supporting disclosure, and, while naming was not essential, something more than the disclosure of a class of 1000, or 100, or even 48, compounds was required.