說明書

United States Court of Appeals for the Federal Circuit
03-1528

Bilstad v. Wakalopulos


This court then distinguished In re Smythe by explaining that the Board properly found that this particular field was unpredictable. "Unlike the circumstances In re Smythe presented, the instant facts present a case in which there is 'unpredictability in performance of certain species or subcombinations other than those specifically enumerated’’.

Thus, unpredictability in the particular field may warrant closer scrutiny of whether disclosure of a species is sufficient to describe a genus.
The distinction in these cases is based upon what would be reasonably conveyed to a person skilled in the art at the time of the original disclosure. 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.

如果說明書僅是揭示幾個下位概念的實施例，能不能請求上位概念的範圍，關鍵在於此領域是否屬於“可預期的”，而能不能預期的舉証責任，通常在於申請人。