## Facts

- Applicants filed a U.S. patent application claiming bicyclic thia-aza compounds with a β-lactam ring, used as intermediates for 2-penem antibiotics.
- Claims 48–51 included Markush-type genus and subgenus chemical claims covering multiple species.
- The examiner rejected claims 48–51 as anticipated under 35 U.S.C. § 102(e) by a U.S. patent to Menard, effective December 14, 1977.
- Menard disclosed two specific chemical species that fell within the scope of the appealed claims.
- Applicants’ U.S. filing date was May 4, 1978; their earlier Luxembourg filing date was May 9, 1977.
- Applicants sought to remove Menard as prior art by (i) claiming foreign priority under 35 U.S.C. § 119 based on the Luxembourg application, and (ii) submitting 37 C.F.R. § 1.131 declarations to antedate Menard.
- The Board affirmed the rejection, finding the Luxembourg application did not support the full scope of claims 48–51 under § 112, and the Rule 131 evidence was insufficient.
- Applicants appealed to the Federal Circuit.

## Issues

1. Whether claims in a U.S. application are entitled to a foreign filing date under 35 U.S.C. § 119 when the foreign application does not provide § 112, ¶ 1 written description support for the full scope of the later-claimed subject matter.
2. Whether applicants may antedate a § 102(e) reference under Rule 131 based solely on foreign filing or foreign activity, without evidence of invention activity in the United States.

## Decision

- The Federal Circuit affirmed the Board’s decision sustaining the § 102(e) anticipation rejection of claims 48–51.
- The court held applicants could not claim the Luxembourg filing date because the Luxembourg application did not describe the same invention as the appealed claims in a manner satisfying § 112, ¶ 1.
- The court held the Rule 131 declarations could not overcome Menard where applicants relied only on foreign activity and showed no U.S.-based reduction to practice (or equivalent proof of invention).
- Menard remained effective prior art because its effective date preceded the U.S. filing date and applicants failed to establish an earlier effective date or antedation.

## Legal Principles

- A claim receives the benefit of a foreign filing date under 35 U.S.C. § 119 only to the extent the foreign application provides written description support meeting 35 U.S.C. § 112, ¶ 1 for the later-claimed invention.
- For broadened chemical genus (including Markush) claims, an earlier application must describe the claimed genus with sufficient specificity to show possession of the claimed scope; disclosure of only a narrower subgenus or selected species may be insufficient.
- Rule 131 antedation cannot be established solely through foreign filings or foreign activities; the applicant must provide legally sufficient proof of invention predating the reference, and foreign activity alone does not satisfy the requirement applied in this case.
- A § 102(e) reference that discloses species falling within the scope of a claimed genus can anticipate the claim when the reference is earlier than the applicant’s effective filing date.

## Conclusion

The court upheld a § 102(e) anticipation rejection where the applicants could not obtain a foreign priority date because the foreign application lacked § 112 written description support for the full Markush-type claim scope, and could not antedate the reference through Rule 131 based only on foreign filing or foreign activity.


In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989)