Trilateral Project 24.1-Biotechnology 168

The answers to 7-1 and 7-2 are the same in regard to novelty. Assuming Y is a large genus, it would not anticipate Y' which is a species of that genus. This contrasts with the reverse scenario where the species Y' always anticipates the genus Y.

If Y is a small genus, then the opposite conclusion is possible. See In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962) (holding that each member of a 20 member genus was sufficiently described within the meaning of 35 U.S.C. Sec. 102(b) because a skilled practitioner would envisage each member of the genus even though the species were not set forth).