Prior Art and the Chemical Invention

Bernard of Chartres used to say that we are like dwarfs on the shoulders of giants, so that we can see more than they, and things at a greater distance, not by the virtue of any sharpness of sight on our part, or any physical distinction, but because we are carried high and raised up by their giant size. 

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Conversely, a claim that is narrow in scope will allow others more room to maneuver outside of the narrower claim scope. However, narrower descriptions of the invention are often more readily enabled since they don t require broad support in the patent specification, and furthermore, the invention is less likely to be anticipated by the prior art since the narrower claim, by occupying less territory, is less likely to overlap with the prior art. So what is an inventor to do Should the inventors go for broke and claim their invention as broadly as possible but at the same time increase their risk of patent invalidity Or should they instead take a conservative approach and claim narrowly Well, as it turns out, the skillful applicant might be able to have her cake and eat it too A U.S. patent can issue with an unlimited number of claims and thus a chemical invention can be claimed from broad to narrow, all within the... 

Selection patents in the chemical arts can take many forms. Selections may be made from a prior art broader range of compounds or compound uses (as in the current example) but are not so limited. For example, selection inventions might also be made from prior art chemical processes where, for example, a broad temperature range or reaction time is disclosed and a later, narrower embodiment is discovered that provides a patentably distinct process. Selection inventions are also sometimes referred to as improvement inventions because the later selection may provide some unexpected result or benefit that helps overcome challenges to patentability based on assertions of obviousness of the later discovery. Obviousness challenges and rebuttals to obviousness challenges are discussed in more detail in Chapter 8. 

A prior disclosure in a document or by use destroys the novelty of any claimed invention that is directly and unambiguously derivable there from. The disclosure not only destroys the novelty of specifically mentioned features, but also destroys the novelty of features that are implicit to those skilled in the art (an expert). A specific disclosure of a chemical compound destroys the novelty of a generic claim embracing it. For example, a disclosure of the use of rubber in circumstances where its elastic properties are used, would destroy novelty of the use of an elastic material in general. ... 

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