Full opinion text
OPINION LATCHUM, Senior District Judge. I. INTRODUCTION These consolidated actions involve the validity and infringement of six U.S. patents issued over the past 13 years. The actions were filed by the Rohm and Haas Company on September 11,1978 (C.A. No. 78-384-JLL) seeking a declaratory judgment that one of the patents in suit, U.S. Patent 3,979,437, was invalid, unenforceable and not infringed (Docket Item [“D.I.”] I), and by the Mobil Oil Corporation on August 14, 1979 (C.A. No. 79-397-JLL) for infringement of three other U.S. Patents. The answers and counterclaims in these suits and subsequent amendments to the pleadings raised the validity, enforceability, and infringement of the six patents now in suit. The six patents in suit are directed to herbicidal chemical compounds, compositions and methods. Two patents are asserted against Mobil Oil Corporation and its assignees, and four are asserted against Rohm and Haas Company. (D.I. 283, Tab 3A, ¶4.) The issues of liability and damages in the actions were bifurcated for separate trials by stipulated Order of the Court on October 17, 1986. (D.I. 161.) The parties have also stipulated that to the extent the patents asserted against them are valid and enforceable, certain of their activities have infringed. (See D.I. 283, Tab 3A, ¶ 9.0 et seq., ¶ 17.0 et seq.) The liability issues were tried by the Court without a jury from October 3, 1988 through November 3, 1988. Post-trial briefing was directed by the Court and completed by the parties on March 30, 1989. After carefully considering the sufficiency, weight, and credibility of the testimony of the witnesses, their demeanor on the stand, the documentary evidence admitted at trial, and the able submissions of the parties, the Court enters the following findings of fact and conclusions of law which are embodied in this opinion as permitted by Rule 52(a), Fed.R.Civ.P. II. HISTORY AND BACKGROUND OF THE LITIGATION The trial in these cases followed over a decade of pursuit by the parties. In that period, the complexion of the cases has changed. Patents have issued and have been added to the litigation, several have been withdrawn from the litigation, and several have gone through reissue proceedings in the United States Patent and Trademark Office (the “Patent Office”). Moreover, the winds of corporate change have landed ownership of, or the rights under, most of the patents in suit in different hands than when these actions were filed. On July 31, 1981, the Mobil Oil Corporation sold its agricultural chemicals business to Rhone-Poulenc, Inc. (“RPI”), including one patent asserted here and two patents since reissued as patents asserted here. (D.I. 283, Tab 3A, ¶ 1.A2.) RPI was then added by stipulation as a party to both actions. (D.I. 85; RX 2601, Tab A, ¶ 3.6.) On February 11, 1982, RPI assigned the patents to Rhone-Poulenc Agrochimie (“RPA”) (id.), and RPA was added as a party by stipulation. (D.I. 97; D.I. 283, Tab 3A, 111.A2.) On April 6, 1982, Rhone-Poulenc Agrochimie was joined as a party to both actions. (RX 2601, Tab A, 113.8; D.I. 58, 97.) RPAG is a wholly owned subsidiary of RPI. Mobil Oil Corporation and the parties added will be referred to throughout this opinion collectively as “Mobil” unless otherwise noted. On May 6, 1987, the Rohm and Haas Company entered into a purchase agreement with BASF Corporation (“BASF”), pursuant to which BASF was, inter alia, given a fully paid exclusive option to acquire an exclusive license to the two Rohm and Haas patents in suit. (Id. at ¶ 1.B1.) Rohm and Haas has retained ownership of the patents, and has continued to make and sell to BASF technical grade compounds covered by several patents in suit. (Id. at 115.3.) Rohm and Haas also has agreed to defend and hold BASF harmless for infringement of the Mobil patents in suit. (D.I. 317 at viii.) All of the patents in suit are directed, generally, to substituted diphenyl ether compounds useful as herbicides. (RX 2601, Tab A, U 8.1.) That is, the compounds have a diphenyl ether backbone which consists of two benzene rings connected through an ether linkage. The structural formula of the backbone is as follows: (See D.I. 285 at 22-23; see also Tr. at 84-88, 423.) Each of the six corners of each benzene ring represents a carbon atom (see Tr. at 51, 92; see also D.I. 285 at 11), and each carbon atom not bonded to the ether oxygen atom can be substituted. (Tr. at 52, 92.) Therefore, there are five sites for substitution on each benzene ring of a diphenyl ether. (Tr. at 92.) There are several conventions known to the art for the naming of substituted diphe-nyl ether compounds. For this Opinion, the Court will use the convention agreed to by the parties for trial. (RX 2601, Tab C at 23.) Referring to the structural formula above, the benzene rings will be the “left hand ring” and the “right hand ring” respectively, and the carbon atoms will be numbered counterclockwise and clockwise respectively as follows: (D.I. 283, Tab C at 22-23.) Substituted diphenyl ether herbicides were known to the art long before any of the patent claims in suit were filed in the Patent Office. (Tr. at 423; see also JX 1166 at 600046-52; MX 1459(A); RX 2036; Tr. at 2032, 3287-88.) As will become evident in the sections of this Opinion to follow, it is the substitution of the rings according to the various limitations of the claims in suit which is critical to the resolution of this litigation. The impetus for this litigation apparently is the commercial success of a herbicidally active substituted diphenyl ether compound known as acifluorfen sodium, or the sodium salt of acifluorfen. The compound has the following structure: Acifluorfen sodium is the active ingredient in commercial products of both Rohm and Haas and Mobil, marketed under the registered trademarks of “BLAZER” AND “TACKLE,” respectively. (D.I. 285 at 34; D.I. 283, Tab 3B, ff 15.0 et seq.) BLAZER and TACKLE are selective post-emergence contact herbicides, which control a broad spectrum of broadleaf weeds commonly found in soybeans. (Id.) The evidence established that, at least as between Rohm and Haas and Mobil, it was Rohm and Haas, through its researchers, most notably Dr. Colin Swithenbank, that discovered the high herbicidal activity of acifluorfen, its methyl ester, and ultimately its sodium salt. In January 1972 Dr. Swithenbank met with Rohm and Haas’ patent attorney to discuss the subject matter of several proposed patent applications based on his research. (See Tr. at 3173— 74.) He memorialized this meeting in a memorandum to his supervisor, Dr. Horst Bayer, in which he described the subject matter of three proposed “Patents.” (JX 1047.) One embraced 3’-earboxy, 4’-N02 compounds. (See id. at 2 (“Patent II”); Tr. at 3175.) A patent application, Serial No. 234,651, was in fact filed by Rohm and Haas directed to this subject matter on March 14, 1972. (See RX 2509, Tab 1; Tr. at 3175.) The application eventually issued as U.S. Patent 3,793,276 (“’276”). (RX 2509, Tab 1.) However, while compounds had been synthesized and tested at Rohm and Haas having the 4’-N02, 2-C1 and 4-CF3 substituents (as in the acifluorfen compounds) (see Tr. at 3318), no compound had yet been synthesized or tested which also had a carboxy at the 3’-position (as in the acifluorfen compounds). (See Tr. at 3193.) At the direction of Dr. Swithenbank aci-fluorfen was first synthesized at Rohm and Haas on or about October 13, 1972 (see MX 1068 at 501509; see also Tr. at 3357-58), converted to its methyl ester on or about October 17, 1972 (see MX 1069 at 501591; see also Tr. at 3361), and to its sodium salt on or about January 3, 1973 (see MX 10700 at 501636; see also Tr. at 3362). The results of initial greenhouse testing of aci-fluorfen esters showed very good herbicidal activity. (MX 1198; MX 1199; MX 1206; MX 1281.) On February 12, 1973, Rohm and Haas filed several continuation-in-part applications based on compounds synthesized by Dr. Swithenbank since the 1972 application was filed. (JX 1079; see JX 1063.) One of these claimed 3’-carboxy, 4’-N02 compounds for the first time, and specifically named and provided herbicidal data for aci-fluorfen and its methyl ester. (JX 1079.) This eventually issued as U.S. Patent 3,928,416 (“ ’416”). (RX 2509, Tab 2.) On March 14, 1973, Rohm and Haas filed a foreign counterpart to this application in the Netherlands (the “Rohm and Haas Netherlands application”). (RX 2099; RX 2099.1 [English translation].) It also specifically disclosed and provided herbicidal data for acifluorfen and its methyl ester. (See RX 2099.1.) The Rohm and Haas Netherlands application was published in accordance with foreign practice on September 18, 1973. (See id. at 1.) Field testing of acifluorfen and its esters in 1973 and 1974 led Rohm and Haas to conclude that while the compounds showed very good herbicidal activity against problem weeds, they were also phy-totoxic to crops such as soybeans. (See MX 1215; MX 1225; MX 1226.) In October 1974 the suggestion was made at Rohm and Haas to test certain salts of acifluorfen, including the sodium salt, in view of the then recent development of an improved process for synthesis. (MX 1290; see also MX 1221.) Initial testing showed the sodium salt to be herbicidally effective and less phytotoxic than the other acifluorfen compounds tested. (See MX 1135.) Subsequent field testing of the sodium salt in 1975 confirmed this, showing excellent weed control applied both pre-emergence and post-emergence at low rates with little injury to the crop. (MX 1137; MX 1242.) Mobil’s arrival at the acifluorfen compounds was hardly as profound. On April 29, 1969, Mobil filed a patent application based on the research of Dr. Robert Theis-sen. The application, Serial No. 819,412, was directed to substituted diphenyl ether compounds having a 3’-carboxy, 4’-N02 left hand ring, and a halogen-only right hand ring. (See RX 2508, Tab 1.) There could be one or up to five halogen substitu-ents on the right hand ring. (Id.) This application, which issued March 28, 1972 as U.S. Patent 3,652,645 (“’645”), disclosed and provided data for a 2,4 dichloro substituted compound, later commercialized by Mobil in MODOWN. (See id.) On February 11, 1971, Mobil filed a continuation-in-part of its 1969 application. (JX 2522.) This application, Serial No. 114,-712 (the “1971 application”), was directed to a broader class of substituted diphenyl ether compounds which embraced the aci-fluorfen compounds. But the broad claims embracing the acifluorfen compounds were not allowed by the Patent Office. (See id. at 30-31.) The claims were amended and eventually allowed as U.S. Patent 3,784,635 (“ ’635”), but as amended they did not embrace the acifluorfen compounds. (See Rx 2508, Tab 2 at col. 7-8.) Between April of 1969 and February 1971, 87 compounds were synthesized and tested at Mobil which fell within the broadened disclosure in the 1971 application. (JX 1609 at 2-7; Tr. at 1358-59, 1617-19.) Of these, 51 had all halogen right hand ring substitutions. (JX 1609 at 2-7; Tr. at 1619-20.) After filing the 1971 application, a less than aggressive program was underway at Mobil with respect to synthesis and testing of compounds embraced by the 1971 application. From the filing date of the 1971 application through 1973, only 54 compounds embraced by the 1971 application were synthesized and tested. (JX 1609 at 8-13.) None had the particular right hand ring substitution of the acifluorfen compounds, that is 2-chloro, 4-trifluorome-thyl (CF3). (Tr. at 376-77; see also JX 1609 at 8-13.) No compounds within the 1971 application were synthesized and tested at Mobil in 1974. (See JX 1609 at 13.) Mobil’s diphenyl ether research program was limited to “defensive research” and “minimum surveillance.” (RX 2093; RX 2095; RX 2096.) Mobil had decided to go with MO-DOWN as its best commercial product. (See RX 2094 at 78482; Tr. at 469-70, 621-22, 646.) Its research efforts had failed to produce any other promising herbicides. (Tr. at 469-70.) It was not until after Mobil obtained a copy of the published Rohm and Haas Netherlands application disclosing and providing data for acifluorfen and its methyl ester in March of 1975 that Dr. Theissen began to synthesize and test these compounds. (Tr. at 384.) It is clear that Dr. Theissen obtained a complete “personal” copy of Rohm and Haas’ Netherlands application by March of 1975. (RX 2099; Tr. at 1128-29.) He placed handwritten “check-marks” on his copy next to the names of acifluorfen and its methyl ester (RX 2099 at; Tr. at 1131-32), and, in fact, drew out their structures in a margin next to their herbicidal data (RX 2099; Tr. at 1132). His own testimony was that the Rohm and Haas Netherlands application “was one of the considerations that ... [he] used” in deciding to synthesize acifluorfen and its methyl ester. (Tr. at 1468-69.) In April of 1975 Dr. Theissen wrote out a proposed synthetic route in his laboratory notebook for preparing acifluorfen compounds, that is compounds having a 2-C1, 4-CF3, 4’N02 and 3’-carboxy substitution. (RX 2047 at 177204; Tr. at 1135.) Dr. Theissen then tried unsuccessfully to produce an intermediate needed for his synthetic route. (RX 2047 at 177204; Tr. at 1135-38.) On June 5, 1975, Dr. Theissen succeeded in making the isopropyl ester of acifluorfen (which was not disclosed in the Rohm and Haas Netherlands application) in a sufficient quantity for herbicidal testing, but did not send the compound for testing because he was interested in obtaining the methyl ester. (RX 2047 at 177205; Tr. at 1140-49.) Dr. Theissen was unsuccessful in his attempts to convert the isopropyl ester to the methyl ester. (RX 2047 at 177205; Tr. at 1147-50.) Therefore, he set out on a different tack for synthesis, employing the starting materials disclosed in the Rohm and Haas Netherlands application. (RX 2047 at 177205-06; Tr. at 1153-57.) Dr. Theissen finally succeeded in synthesizing acifluorfen and converting it to its methyl ester on September 13 and 14, 1975. (Tr. at 1157; RX 2047 at 33927; RX 2049; RX 2051.) He immediately sent the compounds for herbicidal testing. (RX 2050; RX 2052.) Although the compounds had never before been tested by anyone at Mobil (Tr. at 1159-62; see also Tr. at 377), Dr. Theissen’s written comments to testing personnel referred to their disclosure in the Rohm and Haas Netherlands application and noted that they were “potent herbicide[s].” (RX 2050; RX 2052). In fact, no compound within the 1971 application had been synthesized and tested since 1973. (JX 1609 at 13.) The results of these tests immediately “sparked” renewed interest at Mobil in substituted diphenyl ether herbicides, and more particularly the acifluorfen compounds. (RX 2060 at 958; Tr. at 494-95.) From September 1975 through July 1977, 12 compounds were synthesized and tested within the 1971 application and 10 had the 2-C1, 4-CF3 right hand ring substitution of the acifluorfen compounds. (MX 1609 at 13-14.) In March of 1977 Mobil conducted a “comprehensive in-house review of future prospects for herbicides.” (Rx 2121 at 30283; Tr. at 1166; see RX 2122.) Rohm and Haas’ BLAZER (coded as RH 6201) was discussed, although at that time its structure was not known. (RX 2122 at 75697; Tr. at 1171.) It was observed, inter alia, that BLAZER gave “good broadleaf/grass control” with “very little soybean injury.” (RX 2122 at 75697; Tr. at 1172.) In June of 1977, Dr. Theissen obtained a sample of BLAZER. (Tr. at 1184.) He requested analyses of it on June 12. (RX 2100; see also Tr. at 1185.) Upon receiving the results of the analyses, he became aware for the first time that BLAZER contained the sodium salt of acifluorfen. (Tr. at 1186.) The same day he received the results, Dr. Theissen instructed his technician to synthesize the sodium salt of aci-fluorfen. (RX 2072A; Tr. at 1186-87.) The synthesis was completed on June 22, 1977 (Tr. at 1187-88), and the compound was immediately sent out for greenhouse testing (id.; RX 2072). The Court is convinced that Mobil’s diphenyl ether herbicide program was essentially moribund as of 1974 with respect to synthesis and testing of compounds within the broad class of compounds disclosed in the 1971 application. Mobil had not come up with any compound showing commercial promise, other than the MODOWN compound with its 2,4-dichloro right hand ring. (JX 2092 at 31784; RX 2276 at 78845, 78847; MX 1346; JX 2140; Tr. at 621-22, 646-48.) It was the revelation by the Rohm and Haas Netherlands application which put Mobil and Dr. Theissen onto the acifluorfen compounds. Perhaps it was best put by Dr. Theissen in a research report for May and June of 1977 where he stated that Mobil’s research program had been “reinstituted in light of the extraordinary activity exhibited by trifluoromethyl substituted diphenyl ethers.” (RX 2123 at 445.) Beginning in September of 1975, Mobil filed various patent applications with claims embracing the acifluorfen compounds. These were filed as continuation applications, relying on the 1971 application for priority. These applications resulted in the eventual issuance of the Mobil claims in suit. The filing date of the 1971 application trumps that of the Rohm and Haas claims in suit, as well as publication of the Rohm and Haas Netherlands application. Now both Rohm and Haas and Mobil have come before the Court with claims covering the BLAZER and TACKLE products, each asserting the invalidity of the other’s. Rohm and Haas has made and sold BLAZER in the United States since 1979. (D.I. 283, Tab 3A, ¶ 5.3.) Final commercial registration for use of BLAZER on soybeans was not granted to Rohm and Haas by the Environmental Protection Agency (“EPA”) until April 1980 (id. at Tab 3B, 1115.7), but in 1979 six states sought and obtained emergency exemptions for early use of BLAZER (id. at 1116.6). From 1979 through 1987, roughly $28.1 million was spent on the advertising and promotion of BLAZER. (Id. at 1115.10.) Over this same period roughly 67.3 million pounds of BLAZER were sold in the U.S. for total sales of $365.3 million, and 73.7 million pounds worldwide for total sales of $417.5 million. (Id. at 1115.13.) By September of 1980, Mobil also was commercially manufacturing acifluorfen, converting it to acifluorfen sodium and exporting it under the trade name TACKLE. (Id. at ¶¶ 16.4-16.6.) Mobil did not have an EPA registration for acifluorfen or its salts and esters, and could not market those products for use as herbicides in the U.S. (Id. at H 16.4.) In late April of 1981, Mobil decided to seek EPA registration for TACKLE {id. at 1116.17), and was granted final commercial registration for use on soybeans in April 1986. {Id. at 1115.8). From 1986 through 1987 roughly $6.1 million was spent on the advertising and promotion of TACKLE. {Id. at 1115.11.) Over the same period roughly 0.5 million pounds of TACKLE were sold in the U.S. for total sales of $14.5 million, and one million pounds worldwide for total sales of $25.2 million. {Id. at 1115.14.) The Court now turns to the patents in suit. III. THE SIX PATENTS IN SUIT There are four patents asserted here by Mobil, U.S. Patent 3,979,437 (“’437”) issued September 7, 1976, U.S. Reissue Patent 32,215 (“Re’215”) issued July 22, 1986, U.S. Reissue Patent 32,216 (“Re’216”) issued July 29, 1986, and U.S. Patent 4,681,622 (“ ’622”) issued July 21, 1987. (D.I. 283, Tab 3A, MI 4.2-4.5.) The ’437 patent issued from application Serial No. 617,569, filed September 29, 1975, as a continuation of Serial No. 398,-610 filed September 19, 1973, as a continuation of the 1971 application, supra. {Id. at ¶ 4.2.) Serial No. 398,610 issued March 2, 1976, as U.S. Patent 3,941,830 (“ ’830”), and as discussed supra the 1971 application issued January 8, 1974, as the '635 patent. {Id. See also RX 2508.) Only Claim 1 of the ’437 patent is asserted here. Re’215 issued from Serial No. 469,563 filed February 23, 1983, as a continuation of Serial No. 279,274 filed June 5, 1981 to reissue U.S. Patent 4,164,409 (“’409”). (D.I. 283, Tab 3Z, 114.3.) {Id.) The ’409 patent issued from Serial No. 903,271 filed May 5,1976, as a continuation of Serial No. 837,957 filed September 29, 1977, as a continuation of Serial No. 702,367 filed July 2, 1976. {Id.) Serial No. 702,367 issued as U.S. Patent 4,606,758 (“ ’758”), and was a continuation-in-part of Serial No. 617,569 filed September 29, 1975 and of Serial No. 545,232 filed January 29, 1975. {Id.) Serial No. 617,569 issued as the ’437 patent, and Serial No. 545, 232 issued as U.S. Patent 4,002,662 (“ ’662”). Serial No. 545,232 was filed as a continuation of Serial No. 398,610 filed September 19, 1973, supra. {Id.) Claims 4, 5, and 6 of Re’215 are asserted here by Mobil. {Id.) Re’216 issued directly from Serial No. 469,365 filed February 23, 1983 as a continuation of Serial No. 279,288 filed June 25, 1981, as an application to reissue U.S. Patent 4,164,408 (“ ’408”). {Id.) The ’408 patent issued from application Serial No. 836,-885 filed September 26, 1977, as a continuation of Serial No. 702,367 filed July 2, 1976, supra. {Id.) Claims 4, 5, and 6 of Re'216 are asserted here by Mobil. {Id.) Finally, the ’622 patent issued from Serial No. 587,973 filed March 9, 1984, as a continuation of Serial No. 490,357 filed May 2, 1987, as a continuation of Serial No. 181,491 as a continuation of Serial No. 837,-957 filed September 29, 1977, supra. {Id.) Claims 1, 3, 5-9, and 11-15 of the '622 patent are asserted by Mobil. {Id.) As noted above, all of the Mobil claims in suit purport to relate back through various continuation applications to the 1971 application. However, whether each or any of them is, in fact, a “continuation” application and entitled to the benefit of the February 11, 1971 filing date under the law for the purpose of avoiding intervening prior art is disputed and addressed, infra. All of the Mobil claims in suit are directed to either herbicidal compounds, or compositions or methods including the compounds. Mobil employs the following structural formula for describing the compounds in all of its patents in suit: The definitions of the variables (viz: R, X, and n) differ somewhat from claim to claim. There are two patents asserted by Rohm and Haas, U.S. Reissue Patent 31,455 (“Re’455”) issued December 6, 1983, and U.S. Reissue Patent 31,731 (“Re’731") issued November 13, 1984. (Id. at TFH 4.6-4.-8.) Re’455 issued directly from Serial No. 939,292 filed September 1, 1978, to reissue U.S. Patent 4,063,929 (“ ’929”) issued December 20, 1977. {Id.) The ’929 patent issued from Serial No. 617,560 filed September 29, 1975, as a continuation of Serial No. 331,719 filed February 12, 1973, as a continuation-in-part of Serial No. 234,651 filed March 14,1972. (Id.) Serial No. 331,-719 issued as U.S. patent 3,928,416 (“ ’416”) on December 23, 1975, and Serial No. 234,-651 issued as U.S. Patent 3,798,276 (“ ’276”) on March 19, 1974. (Id.) Claims 1, 2, 6, and 7 of Re’455 are asserted here by Rohm and Haas. (Id.) Re’731 issued from application Serial No. 939,291 filed September 1, 1978, to reissue the ’416 patent. (Id.) Claims 8 and 9 are asserted here. (Id.) As noted, supra, Rohm and Haas’ foreign counterpart to Serial No. 331,719, the Rohm and Haas Netherlands application, was filed on March 14, 1973, and was published September 18, 1973, in accordance with foreign practice. (RX 2099.) Whether it is prior art here with respect to the Mobil claims in suit is disputed, and as discussed infra depends on whether the Mobil claims are entitled to the benefit of the 1971 filing date. The Rohm and Haas claims also are directed to herbicida! compounds, or compositions or methods involving the compounds. Rohm and Haas uses a somewhat different structural formula to describe its compounds. It uses either or As with the Mobil claims the variables (viz: X, Y and Z) are defined somewhat differently from claim to claim. As discussed supra, the allegedly infringing product is the sodium salt of aci-fluorfen. The compound or its intermediates fall within the chemistry of the Mobil as well as the Rohm and Haas claims. If all of the claims are valid, the parties here have blocking patents. That is, neither can practice its invention and avoid infringing the other’s without a license. In fact, as noted supra, the parties have stipulated that certain of their activities constitute infringement if the claims asserted against them are not held invalid or unenforceable. Therefore, the Court turns first to the validity and enforceability of the claims in suit. IV. THE VALIDITY OF THE PATENTS IN SUIT The parties bear a heavy burden here to prove that the patent claims asserted against them are invalid or unenforceable. Each patent in suit is presumed valid, and each claim is presumed valid independently of the other claims. 35 U.S.C. § 282; see also Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 961 (Fed.Cir.1986). The challenger must prove facts to establish invalidity by clear and convincing evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.Cir.1988); Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1555 (Fed.Cir.), cert. denied, 484 U.S. 914, 108 S.Ct. 261, 98 L.Ed.2d 219 (1987); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987); American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed.Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41 (1984). A. The Mobil Patents Rohm and Haas challenges the validity of the Mobil patents in suit on several grounds. First, Rohm and Haas contends that none of the claims asserted by Mobil are entitled to the filing date of the 1971 application under 35 U.S.C. § 120 (§ 120), because the claimed subject matter was not adequately disclosed in the 1971 application. (D.I. 317 at 38-39.) Therefore, Rohm and Haas argues, the Rohm and Haas Netherlands patent application published September 18, 1973, is available as prior art and renders each of the Mobil claims in suit invalid as either anticipated under 35 U.S.C. § 102 or obvious under 35 U.S.C. § 103. {Id. at 38.) Second, Rohm and Haas contends that all of the Mobil claims in suit are invalid for failure to comply with the enablement requirement of 35 U.S.C. § 112 (§ 112) and the utility requirement of 35 U.S.C. § 101 (§ 101), because they embrace “a substantial number of compounds with little or no herbicidal activity” and “many of the compounds have questionable stability and cannot be synthesized at all or only after excessive experimentation.” {Id. at 67-68.) Finally, Rohm and Haas contends that all of the Mobil claims in suit are invalid for obviousness under § 103 over the prior art. {Id. at 75-76.) In addition, Rohm and Haas contends that the claims of the ’622 patent are invalid for obviousness-type double patenting over several other patents issued to Dr. Theissen, because the '622 claims are not subject to a proper terminal disclaimer. {Id. at 92-93.) Rohm and Has also contends that the '622 claims are unenforceable here because in response to certain discovery requests by Rohm and Haas in these actions, Mobil failed to identify certain patent applications which led to the ’622 patent. {Id. at 103-104.) The Court will address these arguments in turn. 1. The Mobil Claims Are Invalid In View Of The Rohm And Haas Netherlands Application As discussed, supra, all of the claims asserted by Mobil, although in fact filed later, rely on the February 11, 1971 filing date of the 1971 application under § 120. The Rohm and Haas Netherlands application was published September 18, 1973. (RX 2099 at 1.) However, Rohm and Haas contends the Mobil claims are not entitled to the 1971 filing date, because their subject matter was not adequately disclosed in the 1971 application as required by § 120. (D.I. 317 at 38-39.) Thus, Rohm and Haas contends, the Rohm and Haas Netherlands application which specifically named and provided herbicidal data for acifluorfen and its methyl ester is § 102(b) prior art; and the Mobil claims are invalid as either anticipated under § 102 or obvious under § 103. {Id.) Under our patent laws the Mobil claims are entitled to the benefit of the 1971 filing date if their subject matter was disclosed in the 1971 application “in the manner provided by the first paragraph” of § 112. See 35 U.S.C. § 120. The first paragraph of §112 provides that: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his inventions. 35 U.S.C. § 112. Therefore, whether the Rohm and Haas Netherlands application is § 102(b) prior art with respect to the Mobil claims turns on whether their subject matter was disclosed in the 1971 application "in such full, clear, concise, and exact terms” as required by § 112. See Kennecott Corp. v. Kyocera Int’l, Inc., 835 F.2d 1419, 1421 (Fed.Cir.1987), cert. denied, — U.S. —, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); In re Wertheim, 541 F.2d 257, 261 (C.C.P.A.1976); Martin v. Johnson, 454 F.2d 746, 750, 59 CCPA 769 (1972); In re Lukach, 442 F.2d 967, 968, 58 CCPA 1233 (1971); In re Hafner, 410 F.2d 1403, 1406, 56 CCPA 1424 (1969); Dyer v. Field, 386 F.2d 466, 468 & n. 3, 55 CCPA 771 (1967); Swain v. Crittendon, 332 F.2d 820, 823-24, 51 CCPA 1459 (1964). The first paragraph of § 112 requires both a written description of the specific subject matter claimed and that the description enable the artisan to make and use the claimed invention. See United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251 (Fed.Cir.1989); Utter v. Hiraga, 845 F.2d 993, 998 (Fed.Cir.1988); Kennecott Corp., 835 F.2d at 1421; In re Wertheim, 646 F.2d 527, 537 (C.C.P.A.1981); Weil v. Fritz, 601 F.2d 551, 555 (C.C.P.A.1979); Martin, 454 F.2d at 750-52; In re Lukach, 442 F.2d at 968; In re DiLeone, 436 F.2d 1404, 1405, 58 CCPA 925 (1971); In re Ruschig, 379 F.2d 990, 995-96, 54 CCPA 1551 (1967). See also 2 D. Chisum, Patents—A Treatise on the Law of Patentability, Validity and Infringement, §§ 7.03, 7.04 (1988). These are the so-called “written description” and “enablement” requirements. Mobil apparently concedes that the claims it asserts here are “subgeneric” with respect to its 1971 disclosure and were not “separately set forth” in the 1971 application. (D.I. 319 at 79, see also D.I. 319 at 9.) But Mobil argues that this does not mean that the claims are not adequately supported. {Id. at 79.) The law is clear that to satisfy the description requirement of § 112, the subject matter of the Mobil claims need not have been described identically in the 1971 application. In re Wilder, 736 F.2d 1516, 1520 (Fed.Cir.1984), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985); see also In re Gosteli, 872 F.2d 1008, 1012 (Fed.Cir.1989); In re Wright, 866 F.2d 422, 425 (Fed.Cir.1989); Wagoner v. Barges, 463 F.2d 1377, 1380, 59 CCPA 1213 (1972); In re Schneider, 481 F.2d 1350, 1356 (C.C.P.A.1973); Martin v. Johnson, 454 F.2d 746, 751, 59 CCPA 769 (1972); Dyer, 386 F.2d at 470-71. But the 1971 application, as a whole and as originally filed, must “reasonably convey[] to the artisan” that Dr. Theissen had possession of the later claimed subject matter at the time the 1971 application was filed. Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985); see also In re Gosteli, 872 F.2d at 1012 (“The description must clearly allow persons of ordinary skill in the art to recognize that ... [the inventor] invented what is claimed.”); In re Wright, 866 F.2d at 424 (quoting In re Smith, 481 F.2d 910, 914 (C.C.P.A.1973)) (“The specification as originally filed must convey clearly to those skilled in the art the information that the applicant has invented the specific subject matter later claimed”); Bigham v. Godtfredsen, 857 F.2d 1415, 1417 (Fed.Cir.1988); Martin v. Mayer, 823 F.2d 500, 505 (Fed.Cir.1987); In re Kaslow, 707 F.2d 1366, 1375 (Fed.Cir.1983); In re Driscoll, 562 F.2d 1245, 1248-49 (C.C.P.A.1977). Therefore, each of the Mobil claims must be measured against the 1971 application. See In re Kirchner, 305 F.2d 897, 904, 49 CCPA 1234 (1962); see also Kennecott Corp., 835 F.2d at 1422. For the Rohm and Haas Netherlands application to be § 102(b) prior art on the ground that the 1971 application did not provide a written description of the claimed subject matter, Rohm and Haas must show by clear and convincing evidence that the 1971 application did not reasonably inform the artisan that Dr. Theissen possessed the claimed subject matter when the 1971 application was filed. a. The 1971 Application The 1971 application, as filed, had essentially 3 parts, a summary of the invention, a description of specific embodiments, i.e. examples, and the claims. The summary of the invention consisted of the following: This invention provides herbicidal compounds having the formula: wherein X is a member selected from the group consisting of hydrogen, halogen (e.g., fluorine, chlorine and bromine), ni-tro, trifluoromethyl, cyano, CO OH, (e.g. alkyl of 1 to 4 carbon atoms), hy-droxy, alkoxy of 1 to 4 carbon atoms, alkyl or 1 to 4 carbon atoms, SH, SR1; SORx, SO2NH2 and combination thereof, Ri and R2 are selected from the group consisting of alkyl of 1 to 4 carbon atoms, R is selected from the group consisting of hydroxy, alkoxy of 1 to 5 carbon atoms, aryloxy, chloro, amido, alky-lamido of 1 to 4 carbon atoms, dialkylam-ido of 2 to 6 carbon atoms, SH, SR1; and OM in which M is an alkali metal (e.g. lithium, sodium and potassium), alkylam-monium of 1 to 4 carbon atoms or alkano-lammonium of 1 to 4 carbon atoms, n is an integer of 1 to 5, and in which compound at least one X is other than hydrogen; their use as herbicides; and a herbicidal composition comprising at least one of said compounds and a carrier therefor. (JX 2522 at A3984-85; see also RX 2508, Tab 2, cols. 1-2.) Depending on which of certain assumptions are used with respect to the permitted substitutions, the summary of the invention mathematically embraced somewhere between approximately 390 billion to 210 trillion substituted diphe-nyl ether compounds. (D.I. 286 at 2-4.) Dr. Theissen testified that the summary of the invention defined “the scope” of his invention. (Tr. at 859, 861, 862, 1380.) The examples consisted of specific compounds. First, there was a list of 57 compounds, so-called “nonlimiting examples.” (JX 2522 at A3985-87.) The nonlimiting examples were a potpourri of compounds illustrating various specific substitutions. (See Tr. at 1771-72.) The list was preceded by a method for preparing the listed compounds which involved the so-called “Ull-man ether synthesis” reaction between the salt of “a suitable substituted phenol” and a 5-halo-2-nitro benzoic acid or an ester, amide, or salt thereof. (Id. at A3985; see also Tr. at 1715-17.) Most of the nonlim-iting examples were embraced by the summary of the invention, but no data were provided for any of them. Second, there were 26 compounds actually synthesized and tested by Mobil, including procedures for the syntheses and physical or spectroscopic data purporting to confirm their identities. (Id. at A3987-90.) These were the so-called “working examples.” Third, there were six so-called “comparative examples.” (JX 2522 at A3990-91.) These were “position isomers” of the first four working examples, purportedly to show by comparison the superior herbicidal activity of the working examples. (Id. at A3991.) The comparative examples were numbered to correspond to the first four working examples, i.e. la, 2a, 2b, 3a, 3b, 4a, 4b. They were identical to the corresponding working examples with respect to the identity, number, and position of substitu-ents on the cyclic portion of the “phenoxy” moiety, known here as the right hand ring, but differed with respect to the relative positioning of the COR, NO2 and substituted phenoxy groups on the left hand ring. (Tr. at 1429-34.) The application stated that: [T]he compounds embodied herein in which the nitro group is in the ... [4'] position and the substituted phenoxy group is in the [l']-position exhibit markedly higher effectiveness as herbicides than do the comparable compounds in which the nitro group and the substituted phenoxy group are in different positions. (JX 2522 at A3991.) Finally, herbicidal data were provided and tabulated for the working and comparative examples as applied to a variety of weeds at given rates according to a given protocol. (Id. at A3992-99.) There were 39 claims filed with the application. (JX 2522 at [ AXXXX-XXXX ].) Claim 1 was the broadest and “essentially correspond[ed]” to the summary of the invention. (D.I. 319 at 84; Tr. at 1821.) Claims 2-13 were dependent on Claim 1, and were each directed to a different specific eom-pound embraced by Claim 1. Ten of the twelve compounds had all halogen right hand ring substitutions, one had a combination of chlorine (Cl, a halogen) and methyl (an alkyl), and one had a combination of nitro (N02) and trifluoromethyl (CF3). Claims 14-26 were directed to methods “for combatting undesirable herbs” with the compounds of Claims 1-13, and Claims 27-39 were directed to herbicidal compositions “comprising at least one compound” from Claims 1-13 and “a carrier.” Thus, the disclosure embodied by the 1971 application consisted essentially of a broad structural formula with several variable substituents as set forth in the summary of the invention (and Claim 1) which covered a very broad class or genus of compounds on one hand, and nearly 100 specific compounds some of which were tested as set forth in the examples and claims on the other. b. The %37 Claim Claim 1 of the ’437 patent is asserted against Rohm and Haas. ' (D.I. 283, ¶ 9.6.) Claim 1 is: R is hydroxy, alkoxy of 1 to 4 carbon atoms, or phenoxy; X is halogen or trifluoromethyl and at least one X is halogen and another is trifluoromethyl; and n is 2 to 5. (RX 2508, Tab 4, col. 8.) Claim 1 differs from the broad class of compounds contained in the summary of the invention (and Claim 1) of the 1971 application in several respects. The definition of “R” is narrower. It is limited to “hydroxy, alkoxy of 1 to 4 carbon atoms, or phenoxy.” The definition of “X” is also narrower. It is limited to “halogen or CF3, and there must be at least one halogen and at least one CF3 on the right hand ring”. The number of right hand ring substituents in Claim 1, “n,” is “2 to 5” as opposed to “1 to 5.” As thus defined, no working example is embraced by Claim 1 (Tr. at 1767; see also Tr. at 638-43, 2658), and only one of the 57 nonlimiting examples, methyl 2'-nitro-l’-[4 chloro-2-trifluoromethyl phenoxy] ben-zoate (JX 2522 at A 3986), the so-called “reverse isomer” of acifluorfen methyl ester, is. (Tr. at 1773; see also Tr. 2041-42; 2535-36; 2658-59.) Furthermore, while Claim 1 of the ’437 patent is subgeneric to Claim 1 of the 1971 application, none of the specific compounds claimed in 1971 is embraced by Claim 1 of the ’437 patent. i. Description of the %37 Claim in the 1971 Application The Court finds that Rohm and Haas has shown by clear and convincing evidence that the 1971 application did not reasonably inform the artisan that Dr. Theissen had possession of the subject matter of Claim 1 of the ’437 patent in 1971. More particularly, the limitation with respect to substitution of the right hand ring that “X is halogen or trifluoromethyl and at least one X is halogen and another is trifluoromethyl” was not disclosed in the manner provided by § 112. The 1971 application described a very-broad class of substituted diphenyl ether compounds characterized under one convention of nomenclature as “2-nitro-5-(substituted-phenoxy) benzoic acids, and esters, salts, amides, and acyl halides thereof.” (JX 2522 at A3983; Tr. at 1433-34; see also D.I. 319 at 25, 42.) Whether a compound was an acid, ester, salt, amide or acyl halide depended on the particular “R” “member” selected. (Tr. at 58-66; see also D.I. 285 at 25, 27, 9, and 30.) Substitution of the right hand ring was limited to sub-stituents embraced by the 16 enumerated “X” “members.” The focus of the application was on the relative positioning of the COR, NO2 and substituted phenoxy on the left hand ring of the compounds embraced by the broad class. The testimony of the inventor Dr. Theissen, who was himself skilled in the art in 1971, made clear to the Court that his interpretation of the 1971 application was that its focus was on the particular relative positioning of these groups on the left hand ring. (Tr. at 879-81, 899-900, 901-902, 912; see also Tr. at 941, 955, 958, 1429-34, 1446, 1535-46, 1650-50A.) But the 1971 application did not provide any more guidance to the artisan for substitution of the right hand ring than the group of members from which substituents were selected and the specific compounds illustrating specific substitutions. All of the expert testimony established clearly and convincingly to the Court that the artisan would not have understood from the 1971 application, that in 1971, Dr. Theissen had possession of the subject matter of any of the claims asserted here. The expert testimony was that the information provided by the 1971 application was either too general (as with the summary of the invention) or too specific (as with the specific named compounds) for the artisan to derive the subclasses of compounds defined by any of the Mobil claims in suit. (See Tr. at 1754-55, 1783-84, 2042-45, 2056.) On the one hand there was a very broad class of compounds consisting of the various and many permutations permitted within the summary of the invention. (See Tr. at 1766; 2056.) On the other hand the examples and claims consisted of nearly 100 specific compounds illustrating nearly as many different right hand ring substitutions. (Tr. at 1771-73, 2056.) But the differences in the electronic and chemical properties of the illustrated “X” substitu-ents were so varied that the artisan was left without any direction with regard to their combinations. (See Tr. at 1778-79; see also Tr. at 1582-84.) There were no preferences, guideposts or directions for the subject matter now claimed (Tr. at 1755-61, 1778, 2044-45, 2051, 2053-54, 2620), no working examples within any of the claims asserted (Tr. at 638-43), and very few illustrations of combinations of substituents permitted by any of the asserted claims (Tr. at 1771-73, see also Tr. at 1778-79). Moreover, the artisan would have had no direction to just combine or recombine substituents illustrated by the summary of the invention and the named compounds in order to arrive at the conclusion that Dr. Theissen possessed different compounds or subgenera of the broad genus. (See Tr. at 1771; see also Tr. at 2054.) Even the testimony of Mobil’s own expert chemist, Dr. Gustave Kohn, was that there was no more particular description of any of the subclasses of compounds embraced by the Mobil claims than that provided by the summary of the invention. (Tr. at 2647-55.) “I would say that there is a written description if in a legal sense the generic patent can be considered a written description. That is all I am saying.” (Tr. at 2655.) In this regard Dr. John Roberts, an expert chemist called by Rohm and Haas, testified that the comparative examples supported the relative positioning of the NO2, COR, and substituted phenoxy groups on the left hand ring as described in the summary of the invention (Tr. at 1755; see also Tr. at 1814-16), but that “virtually any combination” of substituents within the named “X groups” could be on the right hand ring. (Tr. at 1784; see also Tr. at 1748.) The artisan would have understood that the right hand ring could have one or up to five substituents at any available position (Tr. at 382, 1748; see also Tr. at 115-116), and that the substituent(s) could be selected from any of the “members” enumerated in the summary of the invention at any position on the ring (Tr. at 383, 669, 859-63, 1701-04, 1748, 1754-55, 1784, 1949, 2056.) The inclusion of “hydrogen” as an “X” member and the proviso that “at least one X is other than hydrogen” (JX 2522 at A 3984-A 3985) would have made clear to the artisan that except for this proviso there were no limitations with respect to substitution of the right hand ring from the named members. Claim 1 of the ’437 patent carves out a subgenus from the broad genus wherein “X” may be selected from only halogen and trifluoromethyl, and the right hand ring must have a combination of at least one halogen and one trifluoromethyl. Indeed halogen and trifluoromethyl were among the 16 “X” “members” described in the broad genus, and combinations of “members” were permitted. (See Tr. at 127, 1949.) Moreover, there were compounds named having halogen substituents and compounds named having trifluoromethyl substituents. But the 1971 application did not convey to the artisan the information that Dr. Theissen possessed the narrower class meted out by Claim 1, and more particularly its limitations with respect to a required combination of right hand ring substituents. (Tr. at 1754-55, 1783-84, 2042-45, 2056; see also Tr. at 175, 383.) One of the nonlimiting examples, the reverse isomer, is embraced by Claim 1, and the subject matter of Claim 1 is embraced by the 1971 summary. But this did not ipso facto describe the subject matter of Claim 1 to the artisan. See In re Smith, 458 F.2d 1389, 1395, 59 CCPA 1025 (1972); see also In re Lukach, 442 F.2d at 970. Rather, the reverse isomer was part of the disclosure which must have provided a description of the claimed subject matter in some way to the artisan. Here, the reverse isomer is one of over 42,000 compounds embraced by Claim 1 (D.I. 286 at 4), and chlorine is but one substituent embraced by halogen. Furthermore, the reverse isomer has only two right hand ring substituents in one of many permitted configurations, and Claim 1 embraces compounds with up to 3 more halogen or trifluoromethyl substituents. Save coincidence, each of the 42,000 compounds embraced by Claim 1 is chemically distinct, and has different chemical and physical properties. (See Tr. at 73-74.) The testimony and evidence made clear to the Court that the identity, number, and position of substituents on the right hand ring of a diphenyl ether compound are, as they were in 1971, critical to the chemical and physical properties of the compound (Tr. at 73-74, 107-109, 833-34, 1090, 1097-98; see also Tr. at 396, 1351-58, 1778-79, 2583), and that the herbicidal activity of a compound with a given substitution was not predictable. (Tr. at 395-96, 398-409, 400-402, 424-426, 1037-42, 1062-73, 1090, 1920-43, 2072-75, 3320-23; see also RX 2089; MX 1603; D.I. 319 at 140-41.) No data were provided for the reverse isomer. It was merely listed among the potpourri of nonlimiting examples. As discussed above there was no direction for the artisan to combine and recombine substituents to arrive at a subgenus. (See also Tr. at 1771, 2054.) Therefore, the Court finds that the artisan would not have arrived at the subject matter of Claim 1 from the reverse isomer. (See Tr. at 1780-81.) The claims in the 1971 application did not provide any more guidance. While Claim 1 essentially corresponded to the summary of the invention, the narrower claims were directed to single specific compounds, and none of the compounds is embraced by any of the Mobil claims in suit including Claim 1 of the ’437 patent. (See JX 2522 at A4000-02.) Furthermore, there were no claims of intermediate breadth directed to subgenera. For the foregoing reasons the Court concludes that Rohm and Haas has proved that the artisan would not have understood that Dr. Theissen possessed the subject matter of Claim 1 from the broad class of compounds, the examples, and the claims. Mobil makes several arguments in rebuttal. First, Mobil argues that neither “preferences” nor a “working example” or “named compound” is required “in order to have support for subgeneric claims.” (D.I. 319 at 79-80.) But even accepting this position, arguendo, does not persuade the Court to reach a conclusion different from that reached above. While the precise way in which an application described later claimed subject matter may be, to some extent, unimportant, see In re Wertheim, 541 F.2d 257, 262 (C.C.P.A.1976); In re Smith, 481 F.2d 910, 914 (C.C.P.A.1973); accord In re Wright, 866 F.2d at 424-25, the application must nonetheless somehow provide a written description. Flynn v. Eardley, 479 F.2d 1393, 1395 (C.C.P.A.1973). See also 35 U.S.C. §§ 112, 120. Here, the Court concluded, supra, there was clear and convincing evidence that the 1971 application did not provide a written description of the later claimed subject matter. Mobil next relies heavily on In re Driscoll, 562 F.2d 1245 (C.C.P.A.1977), arguing that Driscoll held “that where ... ‘the exact subgenus claimed is clearly discernible in the generalized formula,’ the subgen-eric Markush claims are supported.” (D.I. 319 at 90.) The claims, Mobil contends, are “subgeneric to the generic Mar-kush claim filed ... in 1971,” and that, therefore, under Driscoll Claim 1 satisfies “the ‘written description’ requirement ... because the exact subgenus ... [claimed] ‘is clearly discernible in the generalized formula’ in Mobil’s 1971 application.” {Id. at 84.) Mobil parrots the “clearly discernible” language from Driscoll as though it were a special standard for compliance with the § 112 description requirement applicable to the type of claims and disclosure at issue here. Mobil’s position apparently is that Driscoll stands for the proposition that describing a class of compounds by use of “Markush groups” is the equivalent, for purposes of § 112, of describing any subgenus embraced so long as the several “members” of the “Markush groups” of the subgenus are “clearly discernible.” The Court does not read Driscoll as so holding, and in any event is unpersuaded that that is or should be the law. However significant the “clearly discernible” language may have been to the Court’s holding in Driscoll, this Court concludes, in accordance with its discussion of the law, supra, that the standard for compliance with the written description requirement is the same without regard for the form of the claim or disclosure, that is, whether the 1971 application reasonably conveyed to the artisan the information that Dr. Theissen possessed the specific subject matter of the later claims. See also Driscoll, 562 F.2d at 1248-49. As the Court concluded, supra, the artisan would not have understood that Theissen possessed the subject matter of Claim 1 from the 1971 application. Moreover, the facts in Driscoll are readily distinguishable from this case. In Driscoll the applicant sought to rely on an earlier application under § 120, as in the present case. The earlier application disclosed the following molecular structure: Id. at 1247. Separate definitions were provided for R, Rb R2, Rs, and X. See id. The definitions each included several choices. The definition for R was: R is selected from the group consisting of H, alkyl (Ci-C6), haloalkyl (Ci-C6), cy-cloalkyl (C3-C6), halocycloalkyl (C3-C6), alkoxy, alkoxyalkyl, alkoxyalkylthio, aryl; substituted aryl, alkenyl (C2-C6), alkylthio (Ci-Cg), alkylsulfoxide (Cj-Cg), and alkylsulfonyl (Ci-Ce). Id. “[T]he only difference” between the disclosure relied on ... and the later claim was that the later definition of “R” was “simply alkylsulfonyl (Cj-C6), whereas in the earlier application, R corresponded] to a Markush group of fourteen variable sub-stituents ... one of which ... [was] alkyl-sulfonyl (Ci-Cg).” Id. at 1249. The Court held that the later claim was adequately supported by the earlier application, but relied heavily on a statement in the earlier application that: Particularly effective [herbicides] are [thiadiazole ureas] which contain an organic substituent in the 5-position of the thiadiazole portion. See id, The Court stated: [T]he focus [of the earlier application] is unquestionably on the substituents at the 5-position of the thiadiazole moiety, and not on the substituents of the urea moiety. Accordingly, one skilled in the art would regard the structural formula of ... [the earlier application] as signifying that no matter which member of the R group is present on the thiadiazole moiety, the urea moiety may be substituted or unsubstituted. Id. The Court found that the artisan would have recognized “fourteen distinct classes of compounds [from the earlier application], each class having a single member of the R group at the 5-position of the thiadiazole moiety and variable substituent groups on the urea moiety.” Id. The later claim was directed to one of these classes, and was thus found to be adequately described. Id. This Court finds nothing in the 1971 application regarding compounds where “X” is limited to “halogen and trifluoromethyl and at least one X is halogen and another is trifluoromethyl,” which is the equivalent of the statement relied on in Driscoll. (See also Tr. at 1771-73 (no guidance or preference for subject matter of any claim asserted here by Mobil).) In fact as discussed, supra, there was clear and convincing evidence that there was no guidance or direction for the artisan to arrive at any of the later claimed subgenera. Even the testimony of Mobil’s own expert, Dr. Kohn, supports the absence of any more particular guidance than that provided by the summary of the invention. (Tr. at 2647-55; see also Tr. at 2620-21.) Rather, as the Court found, supra, the focus of the 1971 application was on substitution of the left hand ring and its required combination, not substitution of the right hand ring. As one commentary has aptly noted: While ... we have no difficulty with ... [the] holding of the court [in Driscoll ], the court’s heavy reliance on the parent application disclosure focusing on the critical variable in question limits the precedential value of Driscoll and therefore makes its admonition on Section 112 decisions in general particularly appropriate. 2 M.J. Adelman et al, Patent Law Perspectives, § 2.9 [2.-3-1] at 2-1060 to 1061 (2d ed. 1989). Furthermore, in Driscoll, the narrowed definition was for substitution at a single position, the 5-position of the thiadiazole moiety. The 5-position could be substituted by one group at a time. In the present case the definition of “X” is for substitution of up to 5 positions. Moreover, Claim 1 not only narrows the definition but also requires a combination of at least two substituents. Therefore, while in Dris- coll a given compound (or class of compounds) would have one member of the group substituted at the 5-position of the thiadiazole moiety, a given compound in the present case can have any one of many permutations of combinations of substitu-ents on the right hand ring. The artisan was, in 1971, confronted with many permitted combinations and five positions for substitution. Mobil next cites In re Johnson, 558 F.2d 1008, 1019 (C.C.P.A.1977), for the proposition that “[t]he ‘factual context’ out of which the written description issue arises is also relevant.” (D.I. 319 at 86.) Mobil contends that it “was forced to submit subgeneric Markush claims because the ... [Patent Office] kept requiring a restriction or division of Mobil’s generic Markush claims under 35 U.S.C. § 121 [ (“§ 121”), and that] [t]his occurred in the two parent applications for the ’437 patent (the applications for the ’635 and ’830 patents).” (Id.) Mobil, thus, argues that since the Patent Office caused “fragment[ation]” of “the generic Markush claims,” “Mobil should not now be penalized for complying with the ... [Patent Office’s] requirements.” (Id.) The short answer to Mobil’s argument . was succinctly put by the court in Johnson, “insufficiency under § 112 ... [can] not be cured by citing the causes for such insufficiency.” Johnson, 558 F.2d at 1019. To the extent Johnson held that the facts relating to the prosecution of a claim were properly presented and relied on these with respect to the description of a subgenus under § 112, the “factual context” there has no application to Claim 1 of the ’437 patent. Johnson involved later claims in a eontin-uation-in-part application which were sub-generic to broad claims contained in an earlier application relied on for priority. The earlier application described and claimed “in haec verba” a genus of linear polymers, and contained twenty-six examples “disclosing in detail the physical and chemical characteristics of fifteen species.” Id. at 1011-12. The later claims were sub-generic only in that they contained a proviso excluding two species lost in an interference from among the fifteen specifically disclosed in the earlier application. Otherwise, the earlier and later claims were identical. The court reversed the Board of Appeals conclusion that there was no antecedent basis for the later claims, stating that: The notion that one who fully discloses, and teaches those skilled in the art how to make and use, a genus and numerous species there within, has somehow failed to disclose, and teach those skilled in the art how to make and use, that genus minus two of those species, and has thus failed to satisfy the requirements of § 112, first paragraph, appears to result from a hypertechnieal application of legalistic prose relating to that provision of the statute. All that happened here is that appellants narrowed their claims to avoid having them read on a lost interference count. Johnson, 558 F.2d at 1019. There are several reasons Johnson does not support Mobil's position. First, in Johnson both the unnarrowed genus and the excised portion were fully described in the earlier application, and the excised portion included two species embraced by the broad claims. See id. at 1011-13, 1018 — 19; see also id. at 1018 (distinguishing In re Welstead, 463 F.2d 1110, 59 CCPA 1105 (1972) where “applicant was attempting to introduce into his claims a new subgenus when ‘... the specification ... contained neither a description ... of the [subgenus] ... nor descriptions of the species thereof amounting in the aggregate to the same thing (emphasis added)). As discussed, supra, the genus here embraces at least hundreds of billions of compounds and Claim 1 embraces about 42,000 compounds. Second, to the extent “fragmentation” of Markush groups was “required” by the Patent Office in the prosecution of the '635 and '830 patents, it was under § 121. (D.I. 319 at 86; see also Tr. at 2213-14.) For example, in connection with prosecution of the '635 patent the examiner rejected the generic claims (e.g. Claim 1 which essentially corresponded to the 1971 summary of the invention) “as being drawn to more than one invention with respect to the compounds embraced thereby, some of which are too ... [unlike] to be associated together in a claim.” (See JX 2522 at 30-31; Tr. at 2213-14.) But whatever the Patent Office practice may have been at that time with respect to so-called “Mar-kush claims,” the subject matter of claims filed to overcome a § 121 rejection must have been disclosed in the manner provided by the first paragraph of § 112 in order to be entitled to the original filing date. See 35 U.S.C. § 121 (note 59, supra). An applicant could not divide undescribed subject matter from an application and still retain the original filing date. Therefore, the facts relating to § 121 rejections during the prosecution of patents which led to the '437 patent weigh against Mobil’s pos