Application of Alexander D. ARGOUDELIS, Clarence De Boer, Thomas E. Eble and Ross R. Herr
Patent Appeal No. 8347
United States Court of Customs and Patent Appeals
Dec. 17, 1970
58 CCPA 1390 | 434 F.2d 1390
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; R. E. Martin, Washington, D. C., of counsel.
Before RICH, ALMOND, BALDWIN, and LANE, Judges, and McMANUS, Judge, Northern District of Iowa, sitting by designation.
ALMOND, Judge.
This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-8 and 10-15 of appellants’ application entitled “Composition of Matter and Process.”1 No claims have been allowed.
The claimed inventions are two new antibiotic compounds, sparsogenin and sparsogenin A, and a microbiological process for preparing them. Sparsogenin is produced by the microorganism Streptomyces sparsogenes var. sparsogenes. During the fermentation for sparsogenin, sparsogenin A is concomitantly produced. Sparsogenin has a broad spectrum of antibacterial activities, moderate activity against several fungi, and it also inhibits the growth of KB human epidermoid carcinoma cells in tissue culture. Sparsogenin A inhibits the growth of Gram-positive and Gram-negative bacteria; it also inhibits the growth of KB cells in tissue culture and Walker adenocarcinoma W-256 in mice.
Approximately three months prior to the filing of appellants’ application in the Patent Office, appellants deposited two agar slants of the microorganism in the permanent culture collection of the United States Department of Agricul
At the time appellants’ application was filed, it was disclosed on page one of the specification that
The actinomycete used according to this invention, for the production of sparsogenin, has been designated as Streptomyces sparsogenes var. sparsogenes. One of its strain characteristics is the production of sparsogenin. A subculture of this variety can be obtained from the permanent collection of the Northern Utilization and Research Division, Agricultural Research Service, U. S. Department of Agriculture, Peoria, Illinois, U.S.A. Its accession No. in this repository is NRRL 2940.
All parties concede that with the microorganism at hand the invention can be reproduced without experimentation by one of ordinary skill in the art from the disclosure that followed in the specification. A detailed taxonomic description of the microorganism was also disclosed.
During the course of prosecution the examiner rejected claims 4-8 under
The cover letter that accompanied the culture deposit requested that the depository
* * * withhold distribution of this organism in accordance with the United States Patent Office Rules of Practice, Rule 14, until such time as a United States patent is issued to us which identifies this culture by the NRRL number assigned to it. We will be glad to notify you when such a patent issues.
The return letter from the curator of the depository stated in part:
Furthermore, insofar as is practicable in carrying out the business of the Department of Agriculture, we shall refrain from distributing this culture pending the issuance of the patent to your Company, with the exception however that access to this culture will be granted by us upon receipt of written authorization from your Company specifying the name and our number of the culture and identifying the party who is to receive it.
Citing the above-quoted correspondence, the board entered a new rejection in accordance with Rule 196(b). The claims were rejected under
Renewed prosecution before the examiner resulted in a final rejection of all of the claims as based upon a disclosure defective under
In the second appeal, an augmented five-man board reversed the prior art rejection but affirmed the rejection
The board took the position that appellants were attempting to comply with the requirements for an enabling disclosure under paragraph 1 of § 112 by depositing the microorganism in a public depository, thus making the microorganism known and available to the public. Noting, however, that if the microorganism is to be considered known to the public, it must be available to the general public at the time of filing, the board stated:
Appellants do not in fact show or attempt to show that at the time of filing the application the microorganism used was known and available to the public; it is clear from the record that the deposit was secret or confidential and was not available to anyone without appellants’ permission.
We do not think that
Ordinarily no problem in this regard arises since the method of preparing almost all starting materials can be set forth in writing if the materials are not already known and available to the workers in the art, and when this is done the specification is enabling to the public insofar as the public has access to the application under Rule 14 and
It has been pointed out in the Amicus Curiae brief that the same predicament exists in the case of asexually reproduced plants. In regard to plants, a general dispensation from the requirements of § 112 has been accorded by
As mentioned, a unique aspect of using microorganisms as starting materials is that a sufficient description of how to obtain the microorganism from nature cannot be given. Such a description could only detail an experimental screening program similar to the screening programs followed in discovering the microorganism in the first instance. If the microorganism involved were of very common occurrence, it might be found in a relatively short time, but if it were not of common occurrence, it might not be found for a very long time, if found at all. The microorganism involved here, of course, was not known and available to the workers in the art since it was newly discovered by appellants.
Faced with this problem, and in response to the requirements of § 112 for an enabling disclosure, appellants deposited cultures of their microorganism in a public depository in the United
It is our opinion that this procedure meets the requirements of
Whenever a culture of a microorganism is sent to me * * * [by appellants’ assignee] for deposit, I am informed by an accompanying cover letter if the culture is being deposited in connection with the filing of a patent application in the United States. * * * Also, the letter calls my attention to Rule 14 of the United States Patent Office Rules of Practice. I understand that Rule 14 provides that access will not be given to “any pending application or papers relating thereto, without the written authority of the applicant, or his assignee or attorney or agent, unless it shall be necessary to the proper conduct of business before the Office or as provided by these rules,” i. e., the Rules of Practice in Patent Cases. In cooperating with a depositor, we refuse access to a culture to anyone not entitled to it under the provisions of Rule 14 and in requiring authorization from the applicant, or his assignee or attorney or agent, or the assurance of the Commissioner of Patents that access to the culture is necessary to the proper conduct of business before the Patent Office or is provided for by the Rules of Practice in Patent Cases.
It is not necessary that the general public have access to the culture prior to the issuance of the patent. The procedure used by appellants is sufficient to constitute a constructive reduction to practice and to entitle appellants to the benefits of a filing date since they clearly demonstrated that they had solved all technological problems involved in producing the invention. The disclosure is sufficient to permit a thorough examination by the Patent Office and to preclude the possibility that a patent could issue without any person skilled in the art being thenceforth enabled to make and use the invention.
The fact that there can be no description in words alone of how to obtain the microorganism from nature does not mean that appellants must make the microorganism available to the general public at the time of filing the application. There is no good reason why an applicant who has invented a process and product involving the use of a new microorganism must surrender his starting materials to the general public before filing, whereas an applicant in the other arts need tell the public nothing until his patent issues. We do not believe that § 112 was designed to achieve such a result.
The only rational ground for concern on the part of the Patent Office appears to be for the permanent availability of
* * * (1) there is always the possibility that sometime after the issuance of a patent, the disclosure which was initially enabling may become “unenabling” and (2) whether a given disclosure which identifies a material to be employed in the practice of the claimed invention is “enabling” within the meaning of 35 U.S.C. 112, must be decided by a rule of reason applied to the facts of the case.
After considering the facts, the court concluded that the possibility that at some future date one skilled in the art might no longer be enabled to practice the invention was too speculative to justify a holding that the disclosure was insufficient under § 112.
Applying the same considerations in the present case, we note that (1) a public depository was used; (2) the depository is operated by a department of the United States government; (3) the depository is under a contractual obligation to place the culture in the permanent collection, to supply samples to persons legally entitled under Rule 14 and
The only issue on appeal is whether appellants’ disclosure is sufficient under
Reversed.
BALDWIN, Judge (concurring).
I concur in the Court‘s decision and believe that the reasoning of the principal opinion is sound. Nevertheless, the importance of this decision impels me to set forth some of my own reasons for finding appellants’ disclosure adequate under the first paragraph of
It is difficult to conceive that at this late date it has not been settled as to when (that is, at what time) a patent specification disclosure must comply with the requirements of the first paragraph of
The first aspect of that role is to provide the assurance that the public will, in fact, receive something in return for the patent grant. This consideration is, of course, the full and complete disclosure of how to make and use the claimed invention. Thus, the patent adds a measure of worthwhile knowledge to the public storehouse. The incentive to give this added measure of knowledge to the public, which clearly promotes the progress of the “Useful Arts,” is the primary justification for the existence of the patent system.
It should be apparent, however, that this first aspect of the enabling disclosure requirements of section 112, requires only that the adequacy of the teaching disclosure be measured as of
Practical necessity, of course, requires that an application disclosure be intelligible and capable of evaluation before the issue date. The examining bodies of the Patent Office must be able to understand what a claimed invention is, how it works, what utility it might possess, before they can adequately determine whether such invention merits the grant of a patent. One of the considerations involved in that determination is whether the specification disclosure is such “as to enable any person skilled in the art to which [the invention] pertains, or with which it is most nearly connected, to make and use the same.” Under my analysis, however, the reference point for this particular evaluation would be the potential issue date of the patent. No rejection on this basis2 should be made unless the examiner is not satisfied that, at the time a patent would issue, its specification disclosure would be such that one of ordinary skill in the pertinent art reading that disclosure could understand the concept involved and would be able to make and use the invention claimed (aided only by his ordinary skill and such existent technology available to him as might be required by the disclosure).
Apart from considerations relating to the adequacy of the specification‘s teaching disclosure, however, the examination of every patent application involves the further questions of whether the applicant is entitled to a patent under the provisions of
In the present case there is no question that, at the time the patent issues, one of ordinary skill in this art will be able to make and use the claimed antibiotic compounds from the written description included in the specification coupled only with his ordinary skill and the critical microbes, which will then be readily available to him. Appellants have thus satisfied the first aspect of my analysis. Also, the procedure set up by appellants, including the contracted storage of the microbes with the public depository, when coupled with the written disclosure contained in the specification, satisfies me that anyone having ordinary skill in this art would recognize that the invention claimed was fully completed as of the filing date of the application. For these reasons, I find that appellants’ specification fully complies with the requirements of the enabling provisions of the first paragraph of