A patentable distinction does not lie where a later claim is anticipated by an earlier one. That is, a later patent claim that fails to provide novel invention over an earlier claim is not patentably distinct from the earlier claim. That is, fluoxetine hydrochloride inherently blocks serotonin uptake upon administration. Therefore, no patentable distinction rests between administering fluoxetine hydrochloride for treatment of anxiety and inhibition of serotonin uptake by administration of fluoxetine hydrochloride. The only other difference between claim 1 of the 213 patent and claim 7 of the 549 patent is that the former is directed to humans while the latter is directed to animals.
Humans are a species of the animal genus.
Our case law firmly establishes that a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim. Top of the Page Mycogen Plant Science, Inc. v. The patented technology related to genetically engineering plant genes to protect plants from insect pests. Monsanto counters that while it is true that the use must occur during the patent term, the statute also requires that the product be made by a process patented in the United States, and that products made before the patent issues are not made by a process patented in the United States. In other words, Monsanto argues that patented in the United States means then patented in the United States, not later patented in the United States.