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[NJ Patent1]

Jim:   It seems we are not on the same page at all.  I agree and means and, not or.  But that is not what is implicated in the OP hypothetical as I understand it.  I view the issue as written description and enablement in the “genus - species” context.  IMO ignoring WD and enablement likewise damages the patent system because it expands the “reward” of the monopoly beyond the contribution to the art, “quid” and “quo” are out of proportion. 

Fact pattern loosely based on a real case.  Pharmacologists classify aspirin, acetominaphin (Tylenol(R)), etc. as “NSAIDs”.  Applicant discovers that classical NSAIDS “quash” two related enzymes - a phenomenon of nature.  One enzyme“bad” one enzyme “good”.  Quashing the bad one would be good (reduces pain & inflammation), quashing the "good one" leads to unwanted side effects.  The solution to the problem is clear: “let’s find a “selective” agent that quashes the bad one but not the good one.”  Applicant invents ONE chemical compound (species) and claims a method that uses ANY “quasher that selectively quashes the bad enzyme but not the good one” (the whole 'genus').  What do these other unknown selecive quashers look like (WD)?, and how do I make them (enamblement)?  Allowing that claim would give applicant a monopoly on drugs (or mtd of using) they had never invented and IMO would stifle research into still better “selective quashers”. (FWIW, since that case and Ariad, Examiners have been trying to hold my fet to the fire in genus-species cases)

There are of course an infinite # of integers = 1 or greater, but one can immediately start to write them down - they can be "immediately envisioned".  But a chemist couldn’t normall sit down and immediately draw (envision) the structure of compounds that she reasonably could predict would be “selective quashers”, use of which would infringe the claim.   Now the OP was not that extreme.  Elements in the same column of the periodic table often predictably have similar properties, but elements in different columns not always so.  UR a better chemist than i ame if you can predict that #24 would be the same as #13. 

[JimIvey]

Jim:   It seems we are not on the same page at all.  I agree and means and, not or.  But that is not what is implicated in the OP hypothetical as I understand it.  I view the issue as written description and enablement in the “genus - species” context.  IMO ignoring WD and enablement likewise damages the patent system because it expands the “reward” of the monopoly beyond the contribution to the art, “quid” and “quo” are out of proportion. 

No, we're not on the same page at all.

I've read 112 many times trying to see how the words indicate that the written description is not the very thing that must enable one or ordinary skill in the art to make and use the claimed invention.  Yes, WD is now a part of US patent law independent of enablement, but it doesn't come from the statute, in my opinion.

The proportionality of the reward to the technical contribution is guaranteed by 103.  If the contribution, properly enabled, is non-obvious, the reward is earned.  If there are thousands of chemical compounds that can serve as an element of a claim in more or less the same way such that none are patentably distinct from one another, inclusion of all compounds in a single claim is fair.

But there are a couple things that really bother me about the notion that a non-obvious claim can be unreasonably broad.

First, if there is some pornography-like, I'll-know-it-when-I-see-it, nebulous limit on the breadth of claims, there's just no practical way of following that.  The only way to apply a standard like that is for each person to apply their own subjective prejudices to a claim.  Even if that's the law, it's so impossible to follow that I'd probably just ignore -- as I pretty much do with WD.

Second, as an agent/attorney, one's ethical obligation to their client is zealous advocacy.  I would have ethical concerns regarding any self-initiated narrowing of claims without a legitimate concern for 102 or 103.  I don't think one can ethically tell a client or say to oneself during claim drafting, "Yeah, that claim's probably non-obvious, but I'm not going to let the claim be that broad -- it's too broad."

Of course, there are exceptions.  I have one client who wants to build their portfolio as quickly as possible and they've explicitly instructed me to avoid pushing for maximum scope in the claims.  The instruction comes from in-house patent counsel, so they fully understand the trade-off.  I accept those instructions.

Without such explicit instructions to avoid pushing for maximum scope in claims, failure to do so is a failure to zealously represent one's client, in my opinion.

Regards.

[NJ Patent1]

I understand ur point of view.  Re:"failure to do so is a failure to zealously represent one's client"  FWIW, the NY RPCs were changed a while back to replace "zealously" with -- competently --