In Re Gosteli

872 F.2d 1008 (1989)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P's patent application discloses bicyclic thia-aza compounds containing a beta-lactam ring unsubstituted in the beta-position and having antibiotic properties. The examiner rejected claims 48-51 under section 102(e) as being anticipated by United States Patent '912 (Menard). Menard discloses but does not claim, a first species, that is within the scope of claims 48 and 50, and a second species, that is within the scope of claims 49 and 51. P claimed the benefit, under §119 of their Luxembourg patent application's foreign priority date. The disclosure of the Luxembourg application is not as complete as that of P's United States application. The Luxembourg application discloses a subgenus of the genus claimed in the United States application and specifically describes the two chemical species disclosed by Menard. Menard's effective date is December 14, 1977, seven months after the May 9, 1977, filing date of P's Luxembourg application, but five months before P's May 4, 1978, United States filing date. P's patent application discloses bicyclic thia-aza compounds containing a beta-lactam ring unsubstituted in the beta-position and having antibiotic properties. The examiner rejected claims 48-51 under section 102(e) as being anticipated by United States Patent '912 (Menard). Menard discloses but does not claim, a first species, that is within the scope of claims 48 and 50, and a second species, that is within the scope of claims 49 and 51. P claimed the benefit, under §119 of their Luxembourg patent application's foreign priority date. The disclosure of the Luxembourg application is not as complete as that of P's United States application. The Luxembourg application discloses a subgenus of the genus claimed in the United States application and specifically describes the two chemical species disclosed by Menard. Menard's effective date is December 14, 1977, seven months after the May 9, 1977, filing date of P's Luxembourg application, but five months before P's May 4, 1978, United States filing date.