Application of David Neville Kirk and Vladimir Petrow

Novelty of consideration. the claimed

pounds known to have the nenes do not the claimed 2-enols is not belong to questioned, class therapeutic A however i-preg- Application of David Neville KIRK and CCPA Vladimir Petrow. Appeal No. 7522. readily properties appar- other United Court States of Customs utility. ent identical situation Appeals. and Patent corresponding exists relative to the March 1967. 2,3-keto compounds appli- Dissenting Opinions April cants derive from the claimed com- pounds by hydrolysis acid and custo-

mary separation. possible itWhile through research, further efforts may develop important uses others compounds,

for the claimed it cannot disputed that no such disclosure specification

exists in the as filed nor readily apparent

are such useful ends skilled in the art. those recognized

The board if satis-

factory utility products had for the been patent-

established all the claims would be board, however,

able. The the first time mentioned 35 U.S.C. § Smith, JJ., Rich and dissented. Regarding dropped all but section 112. Nelson, the board stated:

* * * However, absent a situation seeking

where the same

claims on the same disclosure as was case,

involved in the Nelson cited regarded

et al. decision cannot be

controlling on Each case must facts. necessity, in view of determined particular facts. own

Regarding appellants’ assertion 2,3-diketo compounds could be con- compoundsby pro-

verted to A-nor known

cedures, the was of the view that board merely postulated were reactions

having support publications

patents to show that were known

prior filing appellants’ date.

board reactions were also noted that the filed, specification disclosed nothing

that there was to show the reac- successfully ac-

tions fact could be

complished, no show- and that there was A-nor ultimate any utility.”

“have Thomas, Washington,

Bacon & D. C. C., (Jesse Grove, Washington, Jr., B. D. counsel), appellants. Moore, Washington, Clarence D. C. W. (Jack C., Armore, Washington, E. D. counsel), Pat- Commissioner of ents. Judge, RICH, WORLEY,

Before Chief SMITH, ALMOND, Judges, Judge H. KIRKPATRICK.* WILLIAM Judge. WORLEY, Chief appeal of the from the decision This rejection affirming Appeals Board of 39, 25, 26, 28, 29, 41 and of claims “1- appellants’ application1 entitled in45 Compounds.” Dehydro-6-Methyl Steroid specific steroid claim defines a Each relating compound, to a com- claim 11 series; spirostane pound claims compounds of 25, 26, 28, 29 and 45 series; 39 and and claims the androstane pregnane series. 41 to unnecessary reproduce claim It is compounds will be- the nature of the since apparent. come rejected all claims Office specification com “to for failure As ply 112.” 101 and with 35 U.S.C. §§ record, are concerned we we view the ap legal adequacy of pellants’ “how to use” disclosure of 35 U.S.C. § claimed under 112,2 legal adequacy as but also the original of usefulness sertions * clear, concise, ‍​​‌‌‌​‌‌‌​​​‌‌‌​‌​​​​​​​‌​‌​​​​‌​‌‌​‌‌​​‌​​‌​​‌‌‍Judge, full, using it, Senior District Eastern District in such any per- by designation. Pennsylvania, sitting as to enable and exact terms per- to which it son skilled the art 796,749, 1. Serial No. filed March 1959. nearly tains, or with which it is most same, connected, pertinent part: make and use the 35 U.S.C. reads § specification mode con- shall set forth the best shall contain a writ- carrying templated description invention, the inventor of ten process making his invention. of the manner and out specification 6-methyl-l 101.3 under 35 U.S.C. We dien-3-ones and :4:6-trien-3- particularly ap- with the are plicability concerned ones which are of value in steroid technology, decision of in the furtherance Manson, applica- Court in Brenner v. 1033, U.S. steroidal and in the research 86 S.Ct. 16 L.Ed.2d facts tion steroidal materials veteri- nary here practice, or medical whether as tablets, elixirs, injections, implants, or appropriate starting point The for dis- types pharmaceutical prepara- other of position appellants’ of those issues is tion well known to those skilled in the specification, begins several with (Emphasis supplied) art. general statements as claimed to how the description The compounds continues with lists are useful: specific compounds cholestane, of the object present It is an inven spirostane, pregnane androstane provide process tion to con for the together steroid series recital of with a 4-6-methyl version of 3- 3-oxo-A compounds “uses” for the recited A4:6-6-methyI oxo- steroidal deriva spirostane lists. Two 1-dehydro- corresponding tives into the disclosed, which, series are 6- one derivatives which are a new class of - - - - hydroxy methyl spirosta- 6 25D high possessing bio often 1:4-dien-3-one, subject claim logical activity. They 11. are said to be provides The invention new * * * of value as intermediates 1-dehydro-derivatives of 3-oxo-A4:6-6- preparation 6-methylated aro- methyl 4-6-methyl A and certain 3-oxo- matic steroid hormones into which having steroids the formula may termediates be converted anhydride

reaction in solution in acetic (Em- toluene-p-sulphonic with acid. phasis supplied) Eighteen compounds of the androstane series are disclosed. recited The five in the clаims are - - dimethylandros- Hydroxy-6:17a 176 [Claim 45] ta-l:4:6-trien-3-one (with or without a double bond at the - - - - - Ethynyl hydroxy 17a methylandrosta 6 1-dehydro-deriva- position) 6:7 - - - - trien 3 one 1:4:6 on account their tives are value [Claim 25] biological properties as interme- or - - - Acetoxy dimethylandros- 4:6a preparation diates in the ta-1:4-dien-3-one [Claim 26] biological properties with useful - - - - dihydroxy Fluoro 9a 116:176 apparent herein indicated or as is - - - - dimethyl androsta 6a :17a 1:4 to those skilled in the art. dien-3-one [Claim 28] ****** - - - - Hydroxy methyl 6a 17a- provides the fol- (prop-l-ynyl) The also invention androsta-1:4-dien-3-one lowing 6-methyl-l :4- new steroidal [Claim 29] part: pertinent argued appeal originally reads in 3. 35 4. U.S.C. This De- any 7, 1965, prior new or discovers Whoever invents cember some three months machine, process, manufac- to the decision in v. Manson on Brenner useful composition matter, ture, or March 1966. On November improvement thereof, appeal useful new and this court restored the cal- subject therefor, reargument, requested obtain a endar for coun- requirements effect, this conditions and sel to file memoranda “on the if * ** supplied) (Emphasis any, title. of Brenner v. Manson appeal.” Argument question on that was heard December “Therapeutic Asserted I. They said to be “Biological” Activity * * * as intermediates of value 6-methylated preparation aroma- rejection, the examiner In his final hormones, into tic steroidal may stated: in solu- reaction be converted rejected again All claims are anhydride toluene- tion in acetic utility. lacking adequate The disclo- acid, p-sulphonic intermediates to one skilled to indicate sure fails biologically active preparation the compounds novel use the is to the art how one ac- in some cases on compounds of this invention. biological properties. count therapeutic properties are stated (Emphasis supplied) e., general bio- i. “useful terms such logical properties”, fails to con- that it pregnane compounds of the Some sixteen vey any information including disclosed, the two series fails and further in the art skilled compounds of claims 39 and com- the claimed to state which of - - Methyl isopropylidene- 6a -16a :17a activity. therapeutic pounds have a - - - - - diоxy pregna 3:20 1:4 diene * * * dione [Claim 39] - - - methyl- Bisethylenedioxy argu- 20:20 6a response, appellants In submitted pregna-l:4-dien-3-one 41]. [Claim rejection warrant- “is not that the ment ed,” an affidavit submitted and also alleged They are to be Petrow, applicants, Dr. one of the * ** intermediates of value as appellants letter summarized preparation compounds with sub- accompanying affidavit biological properties as valuable such stantially here: in their brief reiterate progestational properties properties or an affirmation hereto is Attached associated with the adreno-cortical that one which shows Vladimir Petrow hormones or as intermediates in the would be able in the art preparation skilled compounds with useful biological uses of determine the biological properties. sup- (Emphasis compounds tests. routine plied) claimed specifically affirmation The Petrow Appellants’ arguments are, main, in the * * * of] steroid [the shows that They two-fold. first contend that (Claim 25) McPhail well-known in the specification comply adequate Assay Clauberg modification of possesses 101 and 112 because it discloses that § activity progestational compounds the claimed “have hor- natural oral administration. biological activity useful of the nature hand mone, other progesterone, on the analogous known for steroidal com- response administra- on oral shows no pounds,” and the art that “one skilled in Accordingly, same test. tion compounds would know how use compound quite that the it is evident advantage of the claims to of their take pro- oral a valuable of claim 25 is biological activity.” presently-existing affirmation, agent. gestational This argument speci- The second is that the accordingly, proof fact adequately fication discloses that have in the art would one skilled compounds “have use as intermediates in determining difficulty whether production of aromatic steroidal 1-dehydro derivatives not the biologically hormones and other claimed, value series, have pregnane as compounds,” and that the examiner has agents. biologically progestational as admitted one skilled in the art would supplied) (Emphasis know how to usе the claimed addition, affirmation Petrow purpose. as intermediates * * * determination respective arguments present discloses somewhat ** * activity of of the anabolic considerations, different and will be dis- is shown compound claim 26. separately. cussed procedure standard test uses of the claimed and “how activity compound them, have anabolic to use” does he concluded: addition, that, much it has a * * * nowhere is there found higher anabolic/androgenic ratio than specific allegation propionate, a well- testosterone compound scope within * * * agent. known anabolic specification claims. Thus the does * * * progesta- full, the oral not describe the Further manner such ** * clear, activity concise and exact terms as to tional pound set forth vir- enable one skilled in the steroid art of claim procedure. test This of well-known use the of the instant tue ** * ap- Appellants pregnane is shown to be invention. derivative progesta- proximately listed one use for 4 times active ** tionally claimed steroids and as skilled on oral administration those agent. suscepti- progestational oral art know steroids are a well-known * ** appel- of other tests ble to hundreds of uses. What means really saying lants are to those in the has been found of claim 39 steroids, experiment, art is take these anti-inflammatory ac- to have valuable what use do have find greater tivity of either corti- than that (Emphasis supplied) medicines. By hydrocortisone. sone acetate affidavit, regard pro- With test Petrow further standard of a virtue examiner stated: activity gluco corticoid cedure * * * has been 39 of claim the may progesta- be that oral that 10 times more than activity shown to can be tional determined hydrocortisone procedures * * * acetates. in well known the art. and cortisone After appellants’ examiner went for ing that ^[*] claims quate U.S.C. fication * sound and * * * In his Appellants’ dures.5 art ily determined in the of such do have The affirmation ** ^[*] reviewing the various shows disclosure specification, but *(cid:127) rejected the claims naught, art Answer before reason biological biological fails specification adhered that how and 112 failing affidavit final case as to teach the examiner the to use activity standard to. those activity rejection of Dr. compounds claimed in that utility is deemed lacking an ade- relating to the comply * that skilled those * * can be passages of Petrow as asserted test board, the invention. of all argument respond- skilled nature in the proce- speci- read- not reason to properties” less.” compounds so erence would one skilled filed does not fidavit The board herein claimed tivity activity. use a steroid specific tivity specification pound tional skilled tine to determine at what general use the invention ? bar which satisfy It exists. agent, this would have been does have is not determinative in the art would expect found in the allegation of the claimed “presents Thus, Once one knows that a agreed, specification it is of course vague as possessing progestational is if the In other U.S.C. that allege had filed there had been utility adding that aforementioned af- as to be progestational the art specification no specification as words, specific the compounds probability as a know how doses that merely since of the issue compounds “biological know how sufficient meaning- progesta- if in the the ref- claimed those com- rou- “is ac- ac- animals, laboratory procedures” involved the use of test “standard that shows record 5. The specifically rabbits. rats expression scure “useful ‘technical ” usefulness in the nat- same manner as a pharmaceutical purposes’ unsuc- ural hormone.” cessfully upon by appellant relied Appellants rely allegations on the Diedrich, F.2d In re 50 CCPA specification their the disclosed com- 1355.6 pounds “biological activity” as ade- quate help ap- disclosure of a use for Nor does the Petrow affidavit the claimed compounds, stating: pellants’ cause here. While that affida- may appellants’ show three vit The disclosure teaches that the novel possess do in claimed compounds are, fact cases, in some of value anabolic, anti-inflammatory specific presently existing because of their bio- activity * * glucocorticoid or usefulness logical activity. application progestаtional agents, not oral teaches such steroidal materials is what issue before us. applied veterinary or medical pounds disclosed to do that is deter- are practice tablets, elixirs, form of regard, ap- it is In that minative here. injections, implants pharma- or other specification propriate to note that preparations. ceutical words, In other intimate that the claimed does even question are to be preg- spirostane compounds of used in the manner other steroid “biological series themselves have nane veterinary hormones or medical progesta- activity,” much less the compositions. tional, glucocorticoid or anti-inflamma- They rely also on the Petrow affidavit tory in the affidavit. activities mentioned proposition evidence of the that one eighteen respect androstanes With skilled in the art would know how to use disclosed, of which five compounds, claimed and assert here, “are value it is said claimed * * * “the erroneously, Board completely ig- in some cases account nored the Petrow confirming, affirmation sup- (Emphasis biological properties.” activity useful hormonal of some suggestion which an- plied.) is no There * * *.” reason, or for that are of value drostanes persuaded We are not appellants’ biological properties make them what arguments specification that their meets useful.7 requirements 101 and 112. §§ seems to us agree expres- solici nebulous with the Thus we “biological activity” simply sions “biological appellants’ affidavit tor properties” appearing specifica- in post irrelevant affirmation ex an facto convey original tion explicit adequacy more of the indication to the issue of the compounds attempts usefulness of to add inasmuch as disclosure how to equally use them than did the the disclosure ob- of usefulness statements disap- 6. rejection There approved this court affirmed the nor neither v. Manson applica- of certain reasoning claims for failure of an proved conclusions comply 112, tion noting 531, cases, with section 1033. 86 S.Ct. 383 those U.S. “specific that just it had no appellants’ However, disclosure as those on reliance сompounds how the misplaced. are to appears be used.” In those here cases cases, in- had carried the inventors Appellants rely also on this court’s deci appel- substantially further than vention Hitchings, 80, sions in In re 342 F.2d testing here, pharmacological hav- lants 1141; Dodson, 52 CCPA In re 292 F.2d par- ing proceeded 943, that some 1125; to an extent Krimmel, 48 CCPA In re 292 salutary 948, in- 1116; on conditions F.2d effects 48 ticular CCPA and In re Bergel, 955, 1102, 292 be ascribed to the F.2d imical to animals could 48 CCPA proposition compo compounds general that usefulness of in there. issue sitions matter under § 101 be es results of those tests were disclosed appropriate tablished an application filed, demonstra contrast composition prop tion that lias Papa, useful situation here. See also Archer v. erties or activities when tested in labora 265 F.2d 413; 121 USPQ CCPA tory Appellants correctly point animals. Treves, Blicke 241 F.2d v. out Court in Brenner CCPA 753. synthetic [presumably Indeed, al and appellants hormones application as filed. of the analogy ap- intend to an affidavit draw of the sum and substance ordinary make-up pears skill or constitution one of between to be that and, compounds example, “how to use” the claimed know the art would progesterone] instance the natural hormone en- pounds in the first to find out predict not ables that the new com- are —or whether pounds possess proper- possess would similar useful hormonal —in useful or fact activity.” proper- Moreover, ties, those since some of the and to ascertain pregnane disclosed to an admission se- are. It amounts ties experimentation necessary ries, here, not claimed were stated would be specification possible lack value account actual uses—or determine hydrocortisone-like compounds, of their as how as well anti-inflam- of uses—of the matory properties, appellants employ in a useful manner. But contend to surely Congress them pre- pre- that “it 112 to would be unreasonable to intended § require- dict that suppose others this series e. the [i. satisfaction full pregnane Necessarily, compliance claimed would also derivatives] ments of 101. § property.” description requires have this of how with § inventiоns, presently other- use arguments Similar ad were anomalously applicant an would wise before, rejected by, vanced the Su required how to use a useless to teach preme Manson, Court in Brenner v. stated Die- As this court vention. 531-532, U.S. 86 S.Ct. 1033. We find approval drich, quoting from the de- position no error the board’s on the cision of the board: case, facts absent disclosure in that it was the in- We do not believe specification requisite prop that the require tention of the statutes erties of the claimed are also courts, Office, pub- or the synthetic similar to those of a natural or guessing game play the sort of lic to activity. Appellants’ hormone of known might if be involved arguments recognize many fail to satisfy requirements of the could compounds may possess steroid ity no activ by indicating the usefulness of statutes presumed whatsoever. It cannot be compound possi- in terms of a claimed compound that a steroid chemical is “use meaningless general as to be ble use so ful” under or that one of skill in then, his research or that after it, simply the art will know “how to use” definitely competitors ascer- his has closely because the related compound, use for the tained an actual only in a structural sense steriod to other adducing intended to show evidence compounds known to be useful. Cf. In particular use would that a Adams, re F.2d 50 316 CCPA to men skilled have been obvious particular dissenting opinion. relates. art to which this use appellants’ We that conclude As the Court said in Bren- specification comply does not with 101 § ner v. Manson: merely on the statements of * * * hunting is not a “biological” activity recited therein. license. It is not reward for the search, compensation II. Asserted but as an for its suc- Usefulness * * * “Intermediate” cessful conclusion. Appellants argue portions further As can from that the be seen the grounds concluding specification quoted earlier, appel- board had no expectation spirostane there was “no from lants disclose that the claimed definite specification” any may that one of and androstane derivatives be used compounds “presents proba- claimed as intermediates in the 6- formation of bility steroids, methyl of usefulness in the same manner aromatic and that According may pregnane as a natural hormone.” to claimed derivatives simi- appellants, analogy larly employed produce “The natur- known be steroids hav- compounds “prop- which have no known properties” novel ing “progestational or opinion In Examiner’s this use. the adreno-cortical with associated erties nor does the Examiner suffieent hormones.” holding any know of that such decision that “those has conceded examiner (Emphasis adequate. a statement pro- how to know in the art would skilled supplied) from the claimed steroids” duce aromatic Appellants that contend the examiner’s However, not believe compounds. he did holding9 straight into the teeth” of “is adequacy dis- inquiry into the Nelson, in In noting; the decision this court re there, stop should closure urge They 1031. 280 F.2d CCPA * * * portions dis- As respect present that disclosure with the claim- indicates closure which of the claimed com- to the usefulness interme- useful as ed pounds “is on all fours” as intermediates 6-methy- production of diates view, In their with that Nelson. applicants steroids, lated aromatic requirement for disclosure of examiner’s aromatic show even useful failed produced products the final a use of corresponds to the claim- steriod which carrying process the known on the out ap- words, In other ed intermediates. claims “is an novel intermediates plicants’ statement of absurdity” fur- Nelson and the in view of claim- the novel effect making other in In re ed herein are ther decisions of court 8. The disclosure ner ly ed urging that could be made 1037-1039, in the steroids to used.” We appellants claimed board usable claimed all intents and tions voiced no decision “more Nelson, sessing properties. to the art at application, cific the disclosure and solicitor all seek to scope “progestational” that at least some of the properties as intermediates would be final attention to identical. cular did not intend Nelson to have the narrow the claimed and summarized pregnanes F.2d therapeutic substituents, as “even less attributed to it specifically interesting with no some nevertheless pregnanes. pregnanes 172, 176-177, Although do not with those note, pregnanes. which can be Nor do any specific compound, by the examiner and board specific property this court as to what was characterized purposes, these using experimentation end as did the if directly what the solicitor helpful disclose either time appellants the board here found respect to the claim- purposes. any, There produced Nelson’s compare produced obtain the recited raised here. For “adreno-cortical” 47 CCPA examiner, “evidently additional mole- steroids must be the Patent Of- products which relevant” than prepared as to distinguish is no hint solicitor, rejections filed their direct The court from the from the the man- products may Nelson, having known broad- board rejec felt” pos- spe our be it, what could be done fice. The most 14-hydroxy bers of which are in their brief: under sesses ticular “final produced which are useful ac Nelson. could be used as intermediates class mediates themselves of aromatic oid series. therapeutic properties.” produced ments for reasons not disclosed or otherwise shown that 6-methyl fer “steroids commercial members intermediates are “useful” substances even aromatic claimed Appellants, mediates therapeutic properties dict that art produced ^[*] glycoside specifically class. As opinion. as no ^[*] could not the Nelson activities in common with those ^[*] their They aromatic steroid of a class at least from Nelson’s from their steroids Patent Office might have, guarantee We androstenes estrogen compounds, activity however, brief. But the use of the claimed products” to certain members contend appellants would cannot commercially. They the court case, given exactly predict known to have useful are members of produced would have the cardi- of other members of the aromatic ster- with Nelson’s C-19 also intermediates nor could possess accept one skilled the end interpretation particular under Part was that The court appellants any urge correctly which can be knew about some mem- from their that their might they pre- 6-methyl products produce some of of that a class at all. inter- inter- argu- took they note par- I of pos- any re- 944 558, (Pat.) Wilke, 964, 1032, 1034, F.2d 50 314 CCPA In re court affirmed Adams; Manson, 234, rejection by and In re 333 F.2d the Patent Office of both product They upon process 52 CCPA look 739. latter claims. It noted carrying prin products decisions as forward “no use for the claimed ciple expressed that, developed by in Nelson in their processes to be had

words, necessity speci for a specification.” “there is been shown product fication of an end to teach the use held that “It was never intended that a product granted where such end is not the inven upon product, a or a claimed, merely process tion but producing result there product, unless of.” product such be useful.” Nor was this new doctrine the court. See Thomas might The decision in Nelson well con- Michael, 944, 946-947, v. 166 F.2d 35 trol that decision were still a here —if (Pat.) 1036, C.C.P.A. 1038-1039. precedent. question remains, viable however, The Patent whether Office has view remained CCPA, steadfast in this Nelson—that steriod chemical view. The however, sharply away be useful under 101 if has moved § doing began Appli- ster- Bremner. The trend chemists research on produce Nelson, 172, cation of oids and can be used to steroids 280 F.2d 47 C.C. general (Pat.) There, P.A. which are members class 1031. the court re- rejection versed the Patent Office’s some members of which are known to process [product] yielding a claim on a thereapeutic properties have useful —can chemical intermediates “useful possibly remain the law in view of Bren- doing steroids,” chemists research on ner v. Manson. despite the absence evidence that Court, There in consider- any ultimately pro- the steroids thus process what renders a useful under ultimately duced were themselves thus 101, discussed § appel- cases cited produced tvere themselves “useful.” here, stating ‍​​‌‌‌​‌‌‌​​​‌‌‌​‌​​​​​​​‌​‌​​​​‌​‌‌​‌‌​​‌​​‌​​‌‌‍(all emphasis lants sup- accelerated,10 The trend has culminat- plied) : present case where court case, As is so however, often the process held pro- it sufficient that a simple, everyday word can be [useful] duces the result intended and not pregnant ambiguity applied when public “detrimental interest.” to the facts of life. That this is so is 238, 333 (Pat.) F.2d at 52 C.C.P.A. demonstrated conflict 745. between the Patent and the Office Stripped COPA ap- highly over how proce- the test is to technical plied process yields differences, to a chemical dural here, the basic issue alrеady product Manson, known whose Brenner v. is whether the possible object resting —other than as a sci- burden on an to show inquiry yet his been evi- invention is useful within the re- entific —has long ago agen- quirements denced. It was not 101 has been satisfied. cy and court seemed of one mind on While Manson did not disclose use at question. Application the ner, compounds produced In all for Brem- the steroid 216, 217, process, arguments 182 F.2d his C.C.P.A. he ad- comments, thereby yielded. Application 10. In a footnote to the above See also Adams, the Court added: 316 F.2d 50 C.C.P.A. Thus, Application Wilke, (Pat.) F. (Pat.) Application Szwarc, 2d 50 C.C.P.A. 319 F.2d (Pat.) 1571, court reversed a Patent denial of Office court C.C.P.A. process claim, holding acknowledged U.S.C. its view the law (1964 ed.) respecting utility processes § though satisfied even * * * only specification changed the had recited the since Bremner. process (Emphasis supplied) manner in which the was to be any products used and not use for the why- of the CCPA are in as to accord the vanced those were product may correspond pat- view that a not be useful under sub- § showing utility great- the ented absent of disclosure of a stantial measure to the arguments er specification than on adduced the and the relied absolutely no the in- case. We no here. There can be doubt that warrant find proposition substantial, superficial vague, although of the nature Con- for gress general arguments grant- intended that no disclosures or of “use- building compound ed on a chemical ful or “useful as whose sole research” “utility” potential consists blocks of value to the researcher” was role object recognized, clearly rejected, by use-testing, as an a the different apply set of rules was to Court: meant process yielded unpatentable which the weight Whatever is attached the product. proposition That to us seems encouraging value of disclosure and of attempt little more than an to evade inhibiting secrecy, we a believe more impact the the rules which conced- compelling proc- is a consideration edly govern prod- patentability field, ess the chemical (Emphasis supplied) uct itself. developed pointed has not been degree specific utility, creatеs a Wholly from aside con knowledge monopoly of which should trolling impact reasoning here, of that granted only clearly if commanded inescapable that, just the conclusion is * * * The basic the statute. practical utility as the quid pro quo contemplated by the Con- produced by process a chemical “is an es Congress grant- stitution and the for establishing patenta sential element” patent monopoly a benefit is the bility process, 383 U.S. public from an derived inven- practical utility so S.Ct. utility. tion with substantial Unless compound, compounds, produced process and until and de- refined “intermediate,” “‘starting a chemical specific veloped point to this —where process, material” in such essen an currently benefit exists available establishing patentability tial element justifica- form —there is insufficient that, of that intermediate. seems clear permitting tion for process producing product if a for engross may prove be a broad only conjectural use not itself “useful” field. within it cannot be said § arguments against starting process— These for and materials for such a patentability process e., presently of a i. either claimed intermediates in n —are enough has no known use or is “useful.” It is useful object specification the sense that be an disclose that the intermedi apply equally reacts, “works,” research would ate and that exists scientific pro- patenting product produce or can be used to some intended process. Respondent ap- product duced use. Nor is it known pears respect enough product to concede that with disclosed product, opposed process, belongs to a Con- obtained from the intermediate gress is, has struck balance now class of some subject nonpatentability be, might side of unless “util- or in future ity” Indeed, shown. the decisions use.11 research to determine some appear appellants 11. It does not seri intermediate would not be such ously disagree matter, meaning with us on the for within the 35 U.S.C. reargument merely in their memorandum on make because it be used to can product, state: or because the end intended By analogy process product belongs C. between a class of to a production produсt subject of a inter- and an now the of serious scientific producing product, investigation. mediate an end 946 dissenting opinions. an Mehltretter, 418, has been There F.2d 236 Reiners v. Cf. proce- departure this 1026, from 421, 1019, com- unwarranted where 43 CCPA case, is pro- in this the effect of dure

pounds employed to intermediates my expression preclude views an directly to duce other wherein I to see this time. am unable at useful. found were to themselves by such justice is served the cause impossible reason- to reconcile the It is irregular procedure. is This dissent majority in Nel- and conclusion 1) protest procedure to therefore son, Wilke, and Szwarc with the Adams my 2) adopted, full here notice majority v. Manson. in Brenner view forthcoming written dissent will be Therefore, those deci- extent per- pressures soon as the of court work with Brenner v. inconsistent sions are mit. expressed herein, Manson and the views are, be, must overruled. WORLEY, Judge (specially con- Chief affirmed. decision curring) . Affirmed. regrettable for the first It is most court, history time of this Judge. RICH, orderly processes usual court minority. ignored by been Dissenting Forthcoming Notice of Opinion re-argued appeal De- The instant was majority 5, opinion cember Judge Smith, I, sentiments whose like pres- in its 22 was circulated December dissenting revising share, I now am Yet, now, nearly three months ent form. opinion and the this case to cover dissenting opinions later, 906, case, Joly panion F.2d 54 CCPA 376 given. available and no valid excuse 1966, -, argued together December initially involving I similar issues. majority can would if the It seem that dissenting opinion my tentative filed expediting direct its time and attention response February to the De- herein not be toó the work of the court should majority opinion Janu- and a cember diligence expect much the same Joly. ary opinion Thereafter minority. Joly majority opinion in rewrit- was 75% necessary say that It should not be February again, Febru- ten on 8 and litigants, duty of this court is to content, part ary responsive in applicants patents, the Patent Office dissent, my reduced observations possible public and the —not ensuing three weeks the 50%. judges. caprices whims and of individual long agenda of on a court has conferred discharge duty impossible1 hearings a week of March cases and held derelictions, by condoning the instant 6-10, upon of which conclusion my resumed, revision which hereafter not be countenanced. on March will given by day notice was dissent. On Judge cases these two the Chief Judge. RICH, go Thursday, March 16.” “will down arbitrary Notice Withdrawal use of as- Protest futile, power having proved sumed filing dis- With attached unseemly haste, display unprecedented senting opinion case, I here- above majority, by the necessitates condoned my “Notice of Forthcom- withdraw this notice. ing Dissenting Opinion,” dated. March 16,1967 Patent, (published in Trademark (dissenting). SMITH, Judge April Copyright Weekly Reports 3, 1967, USPQ page fol- No. practice to release usual Our herein). lowing opinion simultaneously majority opinion

947 Judge RICH, (dissenting). 1 I. Introduction Distinguishable 3 Not Be Extended Manson Is and Should

II. Nelson 7 Manson Did Not Overrule III. “Trend,” Nelson Was Intended Starting Than IV. Rather Departure Stop from Established To Short-Lived 9 Law “Highly by Than and Manson Differ More This V. Case 16 Procedural Differences” Technical Meaning Legislative History on the There Is a VI. Vast 17 of “Useful” Supreme in Manson Did Not Hold That Dis- Court VII. Noncompliance in Research Is closure Use Alone Question 21 That the Statute. It Reserved Problems. Unworkable Administrative VIII. These Create Cases Stand, Congress They 24 If Act Should Majority IX. The Con- Are an Incentive to the Decisions triving Withholding Phony Utilities, Informa- Delay Applications, of New tion from Disclosure Compounds 30 Quid X. Pro The Clash of the and the Unsound Sound Quo System Philosophies 38 of the Patent Manson), 519, 1033, 383 U.S. 86 I. Introduction S.Ct. 21, Chap- March 1966. These cases are my Herein I state views both on ter II to Manson’s Chapter I and involve companion In re case and the case placed argued issues not before Joly, 906, CCPA-, 376 F.2d wherein Supreme Court Manson. As I read Judge principal has written the Smith opinion, following the Manson after dissenting gen- opinion, with which closely, including cases attendance agree. erally having These been cases arguments Supreme before together throughout considered Court,1 my the Manson view that Joly on the having decided controlling, decision is not is not deter- agreed opinion herein, basis of its we minative of the issues here. That was on this division the dissent- of labor and my when, 11, 1966, July view on I cir- ing opinions had to in each case have opinion culated an for the court herein developments await in the other. enjoyеd majority support which for more months, during than three time something These two cases are of a dissenting opinion appeared.2 no 234, sequel Manson, In to our re 333 F.2d reversed key CCPA question, my A mind, related (hereinafter Court Brenner Manson then, v. and still is whether our deei- fact, development 1. jority opinion I have followed the first circulated Dec. long of this opinion branch law dissenting 1966. The first prior Coe, Joly Judge Worley case Monsanto v. was also Chief signifi- App.D.C. 155, (1944), separate opinions 145 F.2d Oct. 19 after three cantly twice referred to Mr. Justice reverse had been circulated the late majority opinion. Fortas in his Manson Judge who, however, Martin decided be- fore he died that the “thrust” of Manson Worley Judge filed a dissent- first Chief required Joly. 19, 1966, ing opinion affirmance He never herein Oct. expressly my knowledge. ma- bears little resemblance to his reached Kirie to phrase express Nelson, “we 47 ment with the 280 F.2d sion in In re Nelson), group (hereinafter on view” on a of our cases which CCPA rely, remains we held new chemical appellants principally “useful,” though utility only having I think herein, precedent after Manson. a viable investigation. overruling I find those de- does and that scientific cisions indistinguishable logically haphazard together se- with a somewhat majority by principles applied cases, actually the incon- the other lection of (See foot- Supreme here in the name of Manson. action sistent with the Court’s notwithstanding Manson.) deciding Manson, note 17 of in opinion. some of the words in its out of Man- makes What utility by way under of majority’s son a test for of Manson The extension is that Joly me 35 U.S.C. to herein and in demonstrates utility,” things: “practical “some must have the need for one or both of two specific of Supreme is its summation (1) use.” This illumination further pas- arguments in the Manson majority. My Court, to what is be found directed based on sages “utility” quoted own problem, on the respect of the law summary be that componds, of that dictum would are which to chemical utility specific, there must be substantial in in research chemists fact useful provides cur- benefit which work and commercial in sense their rently reason for manufactured, sold, available form. One that purchased characterizing is that (2) this as dictum purpose; action for that opinion of uncertainty decisions by Congress also refers to remove the Nelson, court, including listed and confusion in which these decisions undisturbed, surely left which footnote 23 and the law. leave utility great- showing required of have “a may legal problems To the that the end case,” any er in the than adduced light appraised practical con- of mine) (emphasis which, remem- it will be legal theories, I siderations as well as bered, The distinc- was zero in Manson. set down have what follows. in mind is that tion which must be borne utility and between some disclosure of Distinguishable and II. Manson Is significant aspect of none. The most Be Not Extended Should application patent his Manson’s purpose of I cannot believe 204(b) is that dis- Rule affidavits Supreme majority in Manson Court utility for the com- closed no whatever patent law future issues was to decide pounds produced process. his claimed unwittingly, by ex- virtue of lower court knowing dictum, pansion Supreme of its without The issue before the Court implications right was, primarily, decisions. In- of such in Manson language may though cautious of its an issued some Manson to an interference with judg- been, expressly claim, subsidiary patent3 process reserved a on a Supreme point aware That Court well was made son brief wherein the ap- aspect practical (p. 31) of this the case that: * * * harmfully pears 12, discussing from footnote rule below was, (my case, prefer operate, wherein it said em- the issue it did in this phasis) use, : and who an inventor who finds no * * * invention, propo- for the there is no basis even disclose his does not afterwards, who, shortly in- sition that even where an over one trying dependently an the new [Manson was arrives at both interference pro- provoke patent] pre- product process with an one issued and a use for the patent a claim which on its face is un- a after full dis- sents patentable, duced and seeks complicated frequently exploit a invention. closure his inquiry overlooks, however, lengthy priority of that only factual into What the brief place. inexorably invention must take interference is the declaration operate policy policy beginning consid- The and that considerations prevent priority disputes (interferences) operate might erations well priority Man- to the one with the well indicated in Government’s award Judge sufficiency Worley opinion In re Fol- being the affi- his issue kers, here- no disclosure davits, containing F.2d 52 CCPA VIII, infra), process, (section inafter product the claimed discussed for the indistinguishable practice from this hence case I find show a reduction to statutory might priority, util- de- one found prima but which he facie patent. ity support of the patentees prive with the unanimous court, legal adequacy not overruled. he has issue is the case here itself, ap- a use in an footnote admitted disclosure of Court Manson, acknowledged the Follcers plication showing having pounds, question being no case as no issued utility “greater being priority adduced” involved. than Manson. While in Manson there was disclo- compound, through sure of use for the reliance diligently I have searched being placed process that on a mere assertion opinion’s Manson of discussion utility Manson, here there to utility was obvious for some authoritative statement utility admitted disclosure in a of what usefulness constitutes pound, to cer- as intermediates make have found more than the dic- no Supreme

tain steroids. in using adjectives “substantial,” Court tum Manson not have this issue “specific,” available,” “currently did before it. “practical,” on I am forced back in Nelson when con- inquiry same I made If it use as intermediates said that by fronted the Patent Office with utility “only the sense that in words, whom and to same research,” object I usefulness be an of scientific purpose? believe, what as I hereinafter Manson, note, 17 of as footnote did doing stated, usefulness, to chemists that findings holding of anti-tumor cases that as intermediates steroids, research on compounds in effectiveness of chemical they to make other desire e., mice, rabbits, rats, i. in labora- make is I further believe sufficient. only tory objects animals, of scientific meaning that this is the as to the law statutory research, useful- constituted of “useful” 101 as it in 35 U.S.C. was § Supreme ness. Court Since the delib- applied by for decades and reaffirmed erately standing these left decisions provision the 1952 codification patentability on was wherein sustained change that, without reasons in basis of scientific usefulness stated, hereinafter it is sound and vener- research, Manson possibly I read cannot patent sys- able law to a sound conducive legally inadequate. finding utility such settling I tem. do that not believe Although opinion Manson makes Manson's claim to an interference argumentative assumption an that “Con- Supreme Court showed intention of gress granted that no intended wholly overturning years of 175 estab- ‘util- on a whose sole chemical “useful,” especially law lished what ity’ potential consists its role as an when seems not to have found the object testing,” there no cita- use significant legislative history underlying legislative prior tion decisions or his- history, 35 U.S.C. is in not tory support assumption, I legislature. in the annals of the none, here, know of is not the case appears and the incon- statement III. Manson Did Not Overrule Nelson sistent with the action taken the Court including majority here, is the Manson footnote 17. See Potter v. judges dissenting Tone, opinions (1911), App.D.C. two 181 who wrote which is Nelson, pre- uses Manson as a history part overlooked unnecessarily overruling Nelson. text for and a case relied on law Chief Hepburn, App.D.C. disclosure, just they operate ferior so fact. See Mason v. (1898); Carlson, F.2d that not interferences conclude 86 436, Woofter v. all grant to the first inventor in CCPA-. Although directly opinion notions are Certainly indicates these con- the Manson legal fact, trary years history, they to 175 Nelson. no intent overrule very conforming majority Supreme little find dictum Manson said Court say majority This con- views. assumed it did about Nelson and requires indicating “view” in find the case and Manson tains errors history overruled, just place legal not well Nelson to be its were find majority opinion compels Manson here these cases to be af- understood. referring However, quotes only passage firmed. Nel- be- the differences son, taking Supreme tween note of one of the er- on which the silent facts inserting rors in it in brackets the Court had to base decision in Man- following “product” son word reference the facts it would to think “process” process about if for the reason it had these cases or one com- parable it, were in Nelson. All the before involved Nelson are such claims about Nelson Court said was conclusions here sharply controlling about therein this court moved effect of Manson away Bremner, legally elementary from In re 182 F.2d unsound under reversing “rejection principles 37 CCPA decisis. stare (which process” of a claim on hope clarify In the next section fact) “yielding intermedi- legal history. where Nelson stands doing ates ‘useful to research on chemists steroids,’ despite absence of evidence “Trend,” Starting IV. a Rather Than ultimately of the steroids thus Stop a Nelson Intended To Was produced were themselves ‘useful’.” If Departure from Estab- Short-Lived any process claims, Nelson had involved lished Law perhaps decision the Manson would trend, contrary Nelson did a not start implication have overruled a decision on Manson. It was statement in them, but not. did stop tended to until some and now to The Government’s brief in Manson very stopping, extent succeeded in a mod- say likewise had little about Nelson trend, ern after Pat- started 1950 in the and deals with the case in a foot- appreci- ent Harlan Mr. Justice Office. stating, alia, note inter that “Product ated Manson this fact. he said in his claims Nelson,” alone in were issue in Douglas, dissent, joined by Mr. Justice overruling Bremner, and “While not 1044, 539, 383 U.S. at S.Ct. at 86 —and interpreted requiring nothing court it as repeated: it cannot be too often more than was in Nelson.” Ac- proof While is not conclusive available tually, opinion, wrote, the Nelson which I e., record, in the [i. Manson there be pains say is at some the rule ing plenty in elsewhere the memories application Bremner was that an must living], those commentators utility contain “an assertion of and an agreement seem to be in that until intended,” indication of the use or uses 216, Application Bremner, 182 F.2d fully the rule met had been 1950, (Pat.) 1032, 37 C.C.P.A. in case, disposed and that we were “not patent applications chemical were com requirement, alter this which has now monly granted although resulting (280 been with us for decade” a F.2d at end use was stated or statement 184, 1047). 47 CCPA at It is not seen extremely in Tak was broad terms.3 how this can be a characterized as move ing is], this to be true Bremner [as “sharply away Bremner,” as the represented a deviation from estab Supreme Court said. practice lished which the CCPA has sought dissenting remedy part only The situation now is clear. The judges held, hold, does Nelson and still the Patent not find Office priori certain want to return notions about the mean- beaten track. If typically regarded of “useful” in 35 was U.S.C. 101 and usefulness predecessor during long prolific inherent and statutes back to 1790.

951 type “compound Joly cases” period, and devel research chemical country, surely Mr. Marcus. opment this is referred to this why result added reason Court’s contemporaneous news historical A Congress adopted until should change Patent Office item on the expressly it, presumably on mandates Engi- policy appears in Chemical empirical this data which the basis of neering for December News possess. (My empha does not Court Supervisory Stone, p. Mr. where sis.] divisions, the chemical Examiner saying: quoted as 3 Justice Harlan’s footnote cites articles 61, 66, in 41 JPOS Geo.Wash.L.Rev. years Bremner several Until case 87, 91, Am. 183 and 14 Geo.L.J. ago, state- that a which made it clear ly requirement for disclosure of Invention,” Pharmaceutical 47 JPOS making “utility” to 35 but no reference Anniversary paper at read the 175th Brem- 101. The examiner on USC relied Symposium April The situa- rejection, supported ner. The his board during extent, period tion of indefinite adding Fahren- reference Avakian v. clearly bracketing passage but (unpublished, bach Decisions Vol. MS by Patent Act of is thus described 172, 425, 426, 1951). Comm’r. 672): (p. Mr. Marcus “Adequacy of In an article entitled in a The cases treated were Regards Specific Disclosure as Embodi- pharmaceuti- different manner [from Wolffe, Invention,” by ment and Use of composition cal and method of thera- board, member of Tolkmith peutic spite of use In disclo- cases]. (a given April JPOS talk stating merely phar- “useful as sures 1958) is the statement: preparation maceuticals or pharmaceuticals,” e., as “intermedi- [i. many cases the manner compounds were allowed as advantage ates”] an invention be used to being for useful There inventions. specification is so obvious very objection was little such dis- objected de- to even if it does not * * *(cid:127) pat- our full closures and files are particular scribe a Nu- use. vague ents with these disclosures. alloys patents merous do not specifically particular use describe the It is not the statutes or the decisional alloys may applied to which changed, law of courts of law which have granted. have been policies. but Patent Office decisions recently only question course, here, Until it was also rather get patents statutory requirements. common to on chemical are the applications use of Kirk and cases where no was steady requirements escalation for the claimed for indicated “utility,” raising them very disclosures of broad indication which a or in anything required the statute included suggestion to use was above or by Bremner, developing deci- its own application. or Two recent in the sions, philosophy brand theories and about Customs new Court of one by “useful.” In Appeals and what the statute means [Bremner] and Patent process, from the Patents as we learned Commissioner Fahrenbach], many put an Nelson record observed on v. [Avakian occasions, [Emphasis con- practice. other confusion worse end to this cross-breeding generated by founded was mine.] commingling sections 101 and requirements reports interestingly that the ex- Wolffe utility, disclosure took the case the Avakian aminer in disclosure, use, how to and best mode position did not the Bremner case lay down with the result that we tried to (P. 67.) compounds! apply to chemical guidelines separate some Nelson “Organic said, The examiner had statutory requirements. these discrete inherently pounds as inter- (not opinion In our 1958 in that case preparing other mediates for published until later because of rehear- utility and this inherent satisfies ing), pointed we first out that empha- statutory (My requirement.” preceding years five so the Patent sis.) respect That is the situation gotten Office had out of line with law to the administration century-old upper echelon law. before some unidentifiable course of the thumb in the Patent Office turned application Nelson’s first filed It did with screws on the chemists. so just beginning when this shift was Congress the courts. no mandate from given place. to take The shift was first change just arbitrarily decided to general publicity by Wat- Commissioner law. portion unpublished son in a of an speech accuracy City him in For the sake of historical delivered Atlantic September 19, 1956, Bremner should be noted that requirement set out to the Division quantum Chemistry of Medicinal a minimum American utility Society, All it Chemical at which time he stat- and no definite test. said policy, ed that this new was that a must be asserted and then well known criticism, being moreover, fully Nelson, to be under indicated. cepted ac- was still (see previous- studied “with Bremner the section of the care.” As to ly obtaining opinion practice “The Bremner he said: entitled Case « n * very past For some time actually paid happened little What in the inter- attention was to the re- quirement by utility nal administration the Pat- a disclosure of law that, building pat- ent Office on what chemical cases. was Some imagined say, specifications it ents were issued with wished Bremner reciting very ruling suggestions and a not in an the barest definitive uses by compounds claimed, interference the new an Assistant Commis- being Fahrenbach,4 sioner in even without uses Avakian v. stated at all. generally began position It Patent Office in Tolkmith a was super- Murphy’s utility 4. tions that if a was statement could This Commissioner visory be inserted would “new mat- review of an examiner’s refusal not be (which interference, silly ter” seems a idea if in fact dissolve on motion Avakian, none) ground ap- there interference on the Fahrenbach’s then the was plication any proceed, should examiner was “devoid of statement as otherwise utility complex should dissolve it. As to on the chemical com- its effect pound law, all does is to reiterate covered the count.” same case Bremner in Bremner. rule that “an situation It does not there must be existed utility exist assertion and an indication of the here. The sent Commissioner case back use or uses intended.” examiner with instruc- Differ and Manson com- V. This that a chemical Case Patent Office “Highly Technical regarded Than an inter- More pound as could prepa- Procedural Differences” substance useful mediate compounds, since other ration of this case between The differences regarded or- as was obvious being aptly de- from are far Manson ganic compound Ex be so used. could majority describes thus the scribed —and USPQ Watt, parte C.D. terms lawyer’s brush-off them classic procedural dif- “highly technical —as the law the view of such was also And to assume It is naive ferences.” Tone, Potter v. taken the courts. decided have Court would Reviewing supra. speech makes it have or would it did Manson this case as concerning really аppear what was supporting rea- same sort of uttered ‍​​‌‌‌​‌‌‌​​​‌‌‌​‌​​​​​​​‌​‌​​​​‌​‌‌​‌‌​​‌​​‌​​‌‌‍the Office, into the Patent which blurred soning respect Different to it. with cases, the desira- other “chemical” was decisions call for different facts descriptions bility complete of full and rationalizations, n ofthe call forth different using phar- manner of anyone written an who has ever knows preparations for hu- maceutical intended question is not opinion. here very man This is a use as medicines. and later whether a second problem ques- different broad utility for with no disclosure of statutory tion of usefulness. product process should be allowed of a Historically, insupportable I find it patentee an interference with say “trend.” The that Nelson started a disclosure, good the at- with who had flare-up utility rejections during taking patent possibility tendant period years of four or five —but away issue That the real from him. now, decisions, will under quite dif- here is in Manson. The issue indefinitely continue and with no clear existing specific disclo- whether ferent: guidelines in fact an innovation —was compounds, sure of the utilities of new interpretation a stable of the word “use- else, yet anyone patented not prevailed ful” in the statute which had com- other to make termediates century, for over a both in sup- pounds disclosure is a sufficient Office and the courts. Nelson reviews pat- history heading “Utility.” port this otherwise under the on an a first review, For an unobvious) earlier brief see “Com- (i. e., new and entable parative Utility Requisite as a of Patent- course, but Utility, pound. ability,” by Marshall, C. O. 1 JPOS ques- This patentability. prerequisite seq. (1919). 553 et It behooves those Manson. We presented in tion was speak authority who would on what knowing the Court way how have no “useful” means in law to consult decided it. would have ample history some of the of the sub- clear, I understand is therefore ject hoped foregoing and it is decisis, there principle of stare puts place opinion of the Nelson bearing Manson decision in is no development perspective. in clearer is, there- this ease and issue in sole controlling are free We imagined, fore, here. As be the self-induced not reasoning facts change set of position apply to the part in on the the our of to Manson, on respect in The words Office with the us. to what before hangs requires by majority rationaliza- way law its of the disclosures of which utility the full applications is but in result which has con- tion of a dissenting opinions in heavily flowering disproportionate tributed of the authority bind- appeals Nelson, number in are not words chemical cases. my judgment, majority Nor, be- ing The in decisions us. and their incon- on underlying sistency holdings erroneous with other of several over- cause they words change assumptions, even ruled are are not calculated to that factual picture. wisdom. law-making, majority myself in Manson align with as the to I am constrained opinion in that expressed Har- be mere dictum Mr. Justice would

the views if dignity I expressing to of “law.” views is raised as lan refer to which long think, and clear in view here. omitted legal history construc- on the course Legislative “useful,” There Is a Vast im- VI. would that tion it Meaning History on to proper an intent to such attribute Supreme “Useful” Court. majority Though think I am sure and the Patent Office The adhering reasonable, being most up are 101 and 112 sections wont to mix are principles in the Constitu- to embodied “utility” find some- to issue and Congress tion, following “must what thing and can found more than intended,” are point of fact The Nelson requirement of 112. ignoring legislating the law Con- replete with and record were case briefs gress enacted it. “section to the non-existent references argument utility requirement.” The in Manson found The Court be, was, to the two and still seems legislative in the “no assistance inseparable can and each sections 101,” underlying which was materials § hands —if to the other’s be used wash That is because 1952 enactment. “prac- you requirement for find a cannot taking legislature action was then cannot) (and utility you in 101 tical” except respect provision Judge you Kirk- in 112. find then change, wherefore reenact without patrick in Nelson it in dissent voiced necessarily “legislative materials” true (my emphasis): follows long history of con- consist unwilling accept mere Apparently repeated reenactment struction application that statement change, some re- rather than without useful, Congress subject hearing. matter is testimony at a visor’s note effect, which, re- added Section 112 consider, history rather is must one spec- quires in his the inventor to tеll pre-

than inner one’s consciousness exactly how make use ification conceptions. ministrative cation of as tion of writers, law Considering, tion lative analyses statute, one of the course “useful” has statutes, date, lows: (B) anybody expressed analyzed always If one then enacted (1790-1952), situations ABC’s of the situation of 162 this (A) the Patent any simplest prerequisites was was term practice, without in If been finally, years intent courts’ the examines legal “utility.” All Nelson one is found employed of all first found. cases, texts, any degree Act of the identical the courts it is clear that the goes views Congressional is change in detail. slightest possible patentability. through Through to describe interpreta- in 1790 are as the text- the and ad- legis- indi- term law, case (C) fol- ac- the by “useful.” of Which “no ging the fully. his Thoughtful describe the certainly means, Section separable the invention. the question known up ^[*] outstanding primary showing to usefulness. The invention can majority opinion finally requirements question going ^[*] use,” from those of Section that the manner of manner of analysis in section the around ^[*] “only as to what meaning specification ^[*] conjectural use,” view will show that is also must show using employed Section using characteristic provision of of ^[*] circle, “useful,” begging * Section 112 as meant ^[*] shall end- * * beg- how use- majority indulging judicial specific here and “some use” is without once leaving meant, not confound it to current cases so as explaining meanings requirement with that own their section to formulate readers pointed according out These of section 103. It own notions. has been to their “currently again days along “specific,” terms, of Justice time since the with Story, fully Nelson, available,” “practical” use can all discussed in degree utility public one label— is of no concern under be subsumed majority elementary principle “petitio principii.” This What whatsoever. any through appears gotten applicable wishes law not to be the utility given implicitly who in terms situation is taken those still talk of fact granted. History “quid pro quo” patent. law of and the for a The for case only by every quid pro reported quo author who ever demanded statute provide a wrote a textbook sounder disclosure of a new and unobvious full working mostly foundation and are invention which is of some use some- reported They very use, patent If in Nelson. are unani- one. it is of little finding any correspondingly very will mous in law to be that little degree slight, utility, patentee, value however to the who has never plies requirement with the that an been called on know or either to to ex- plain potential vention be “useful.” has all The uses of his invention. “quid pro quo” philosophy an undefined The hard fact never knows is he almost simply squared utility years cannot be with the full extent of the until legal history. after he makes his invention. Uses evolve inventions are disclosed. after Any to add to effort section 101 VII. Manson The through Court any section must fail in his- Did Not Hold That torically justifiable Disclosure construction of the Is Non- Use Research Alone simple statute for and con- compliance trolling It (A) with Statute. reasons that: The relevant Question Reserved That terms now in section have also been substantially ever same since thing The main to be remembered were first introduced into the statute opinion about the Manson in section 2 of first Patent Act of speaks about a in which there situation approximately 1790 and cast into utility. was no disclosure present form in revision act of relatively opinion Manson The (B) interpretation section 6. say short, opinions go. not does throughout ensuing century “useful” actually point much. decided including and a half the courts as provoking purposes is that for any anybody including use useful- — process an claim with a interference ness as an “intermediate” to a research an issued for a notwithstanding chemist —was made patent on the claim must disclose same provisions concurrent section process produces a “useful” (§ 4888 of the Revised Statutes from product, enough it is not to assert 1874 to which contains the exact product the use of is obvious phraseology 112). of § applicant, specific but some must use (as said), be mentioned Bremner considering history this case-law least in the absence of evidence that a alert, escape one must be in order specific use would obvious. being elephant mental pits, to avoid con- by opinions dealing Now, fused cases utility per products se but with the unob- uses the claimed are as- (or predecessors, (In Joly making processes viousness issue serted. presence “invention,” products claimed.) or “inventiv- also This Stringham it) level” as calls in terms is the first from Manson. difference degree Manson, as an indication To use the words of there exists greater precaution “utility thereof. The same is called' disclosure of than deciding patentability present case,” for in issue adduced re- and that is sible answer to surmount next hurdle zero. The workers in their research. There search “a chemical reference to the Manson nothing “practical” ‘utility’ uses. about these of sole consists whose object potential use an role as its testing” of its acts that the It from is clear me process product of a and a regardless Supreme majority, of Court only in sense that which “is useful they though words, pleasing of its some may may object re- an be dissenters, scientific of de- to the Nelson (My emphasis.) search.” passing liberately on refrained fact we in the situations such as merely the words People look who cases, instant where there are regard to what opinion without an specifications uses disclosures in trying “law” discover in court does workers, name- chemists research discovery religious as from its as far are ly, specifically make other named use to discovery are from the fundamentalists coupled compounds, with a Of- insisting holy in writ in “truth” fice of record how to admission (7) days. seven made in world was purpose use under for that 35 U.S.C. actually in the respect to what was With an for- is not issue. Lest Supreme Court of the mind collective gotten, quote disclosures, simpli- those testing” majority “use when talked fied omission of the involved chemical research” —which “scientific replaced names which are only something we can surmise —the retaining clauses bracketed the let- significant Court most act designations parentheses ter in used it ac- footnote 17 where manifest in its opinion: the board in its tually grips relat- decisions with came (c) spirostane series, testing” re- “scientific [The “use (there four cases cludes claim lists value 11] search.” there really preparation are two com- in the five as there intermediates 958, 6-methylated Bergel cases, panion 292 F.2d aromatic steroid * * * 955, 48 CCPA hormones CCPA 1101 and F.2d 1102, issue, both both with same 26, (d) androstanes, [The claims Worley) opinions by Judge Chief are of value as inter- 45] alleged chem- the sole preparation mediates object compounds was “an ical 6-methylated aromatic steroidal testing,” object or “an of scientific use hormones, into animals, spec- laboratory research” converted reaction solution anhydride ified in footnote We held such in acetic with toluene- p-sulphonic acid, as intermediates section 101. utilities under sufficient biologically preparation Supreme majority As to Court these active and in some very “express careful view.” biologi- on cases account of their brings This us to contention of the properties. cal Manson decision here (e) pregnane series, claims [The “prac- “specific” demands assertion are of value as intermediates 41] utility” tical is. What- —whatever preparation in the is, ever it Manson nor neither biological proper- with valuable majority give clue, the contention sim- progestational prop- ties such as ply jibe cannot be made to the act properties erties or associated withholding Court with the adreno-cortical hormones judgment legal adequacy on the dis- prep- or as intermediates closure of “scientific” tests on lab- use aration of with useful oratory rabbits) rats, (mice, animals biological properties. compliance statutory as a with the re- quirement cry far from the invention be This is a total silence “useful.” Useful to whom and what? Manson and it is more than use pos- compliance rule of Bremner. footnote cases there is full with the

957 Co., 1, 18, Unworkable VIII. These Cases Create U.S. S.Ct. If Problems. L.Ed.2d Administrative 545. Congress They Stand, Should patent system very operated The well Act —indeed, a lot better and at a lower cost money, in time and with less trouble and majority, its im- of the with rule appeals fewer Of- —before criteria, up possible-to-define sets fice, very long using ago, Bremner not so line-drawing administratively impossible going beyond as an excuse but far utility? problem. “practical” What requirements, get-tough pol- initiated its view, clearly My I which believe is icy bringing utility, policy on chemical a legal history, a new accord with is that appeals confusion in its train as the steroid, can which a research scientist during past this court decade well daily work, and which at once in his use practical illustrate. From the adminis- manufacturer, a in accordance chemical standpoint, rule, trative the best practice, common commercial will with is what we had until substance knowing happy be to sell him without compounds per is that chemical are se it, has, in Man- what is to be done with meaning “useful” within of 35 U.S.C. terms, “currently available,” son “sub- 101. Since that was § the rule effect stantial,” “practical” “specific” and Congress when reenacted the “useful” research scientists as —to provisions and “how to use” segment public. the relevant the same terms which had been I am unable to how or determine beginning, from statute is no there de where to draw the line between such assuming any for basis that “intent” compounds in- facto useful and those there should be a rule. different Folkers, in In re 344 F.2d volved brought pass If cannot (1965), opinion by 52 CCPA 1269 Wor- decisions, problem should court then the ley, J., example, C. for one wherein Congress. An effective be submitted to unanimously accepted this court as ade- law to statute which would restore showing quate compounds a that century half a was for and it reducing oxidizing “useful or were as (a) merely provide: would have to agents,” is no more than a state- and new unobvious chemical capable meaning per ment useful se within the (b) reactions, shall 35 U.S.C. and two kinds basic chemical § conclusively presumed will that chemists bio- “useful to the were mean- know how them within use enzyme systems,” study chemist ing of 35 U.S.C.' nothing but re- “scientific testing.” search” or Folkers law, “use however Such restoration state application, moreover, did not even salutary accomplished, would have the prop- merely these utilities. stated (1) rendering It def- effects of: law willing erties from which the court was inite, (2) removing from the a burden to infer “some uses.” The has examining corps equipped to is not seen no need to overrule this decision reducing ap- (3) deal effectively, with Manson. to find it inconsistent with peals, (4) speeding up disclosure has shown no desire If (5) to be consistent. consequent research, facilitation is to an indication of increasing where produce and the incentives to line, draw fail to see how encourag- either (6) compounds, disclose new group the inventors production marketing of new Patent Office exаminers will be able to experimental purposes for such, follow it. The law them, should be develop which will new uses possible, sofar advancing advantaging examiners thus the art “strictly,” can follow it public, (7) admonished putting an end the Commissioner wasting concocting the Su- money time and preme Court in Graham v. John merely Deere compliance uses with Patent product produces practice requirements, herein- Office (8) we will stopping Then exemplified, the intermediate. after question made to who has requiring illegal practice two serious If the intermediate. be the invention can be made before one inventions to of unobvious, it product by is dif- the useful end patented often made —inventions of the working inventor would seem that the people for different em- ferent join in- to the inventing compound will ployers, intermediate have the one product him in discovering of the end use. ventor the another get patent. On the a order to valid fol- point the illustrated The is last product hand, if useful end other the Joseph lowing paper read a from knowledge of the is obvious the distinguished Philadel- Gray Jackson, intermediate, the it seem that would teacher, lawyer at an patent phia get a can of the intermediate inventor of South- Law the on Patent Institute by dis- aas inventor valid sole Dallas, Foundation, Legal Tex- western product. We closing the useful end Discussing Manson as, March challenging problems will also have mine): (all emphasis he said pos- statutory about Can it be bars. utility from It would seem that thus public of publication or use sible that aiding standpoint the research the year than the intermediate more one highly undeveloped community is a discovery any prior useful Law. the area in Patent uncertain statutory product a bar will end create matter, you practical if invent As a against patenting be- intermediate the research, as a new machine for such possible file a valid fore it is to microscope, electron an electron application It intermediate? the analyzer chromatograph, probe it or a you a create me cannot seems to is Patent Office believed year statutory bar one after until readily accept will idea the courts possible for inventor question it is useful without application for to file an intermediate utility to informa- the scientific patent. a valid particular process or tion derived in a product. An is re- elaborate ritual dance satisfy quired Office process If the invention relates to a drug. utility of a the disclosure of which research, is useful humans, drug applied If is be requires utility Patent Law for the usually requires the Patent Office product. [Citing If Manson.] tests, is, human tests on clinical composition invention a new relates to get patients. It difficult research, utility solely whose exists proof accept Patent Office example, a new chemical inter- experiments performed on based on mediate, grave there is doubt whether alone, unless course animals enough utility this is the inter- unless drug veterinary drug, or relates is a produce products mediate is useful to something X-ray opacifier like an utility. which have themselves known foreseeably perform the which will it is to be the law a in- new If way humans. same on animals as on termediate for which known useful case reservation in the Manson product patent- end exists not to be question treat- as to whether able product until such end might ac- be ment of tumors in mice developed, in the will meantime we utility, cepted doubt throws further strange have a situation. Jack- [Mr. be as to how far animal tests will yet son had not learned of these deci- effective. sions.] intermediate will be a potential again foregoing suspended how invention held in see we patentable animation. a is not a situation decisions create get one vention. The two inventions to inventor the inter- it takes may patent, mediate will different have to made wait until some- anywhere people Mr. Jackson I at different times. know of or else fully developed prob- po- applicants has not even brief has shown—the compound applicants compound If as the lems. claimed tential chemical invention, patents began ponder problem how can the discoverer inventor, joined its use as an since to do. compound did not he invent single- 6-page me have before been to him as delivered spaced one memorandum internal stranger? If invention is the them, a research chemist (as рrocess, use that is claimed largest companies, country’s di- 100(b)), U.S.C. how can the inventor counsel, company patent dated rected to joined, since he did July months before few “joint” not discover it? is no There argued. Nelson I know no bet- case was invention in such cases. See U.S.C. way ter to clear the mistaken make 102(f), expressly prohibits which § philosophy5 majority of and to show claiming, patent or invalidates a claim- how will work in it commercial ing, patentee that which the or following pas- world than to extract “did not himself invent.” Cf. 35 U.S.C. sages (my emphasis): 282(2). organic A well-characterized majority, Thus the rule of the and of chemist, something pound is which the majority it, Manson if read as the reads art, e., person def- in the i. a skilled plays large into of the hands to initely can use. knows how to He gigantic corporation possessed esterify etherify hydroxy radical a manufacturing of but, chemical facilities compound, can amidate in a he involving subject in cases matter such as alkylate radical, knows he an amino biological here, screening and test- variety great to a how introduce testing facilities —even clinical fa- ring, and substituents into a benzene cilities —as well. enough typical reac- he knows about majority The trouble with organic typical rule tions and would seem to stem from the fact unknown to start with a hitherto opinions not, the authors of the through do compound proceed or do to, consequences not wish gain see many steps in as 30 or 50 order decisions, example being developed Hence, compound. a desired end next section. organic compound the chemist new * * is a which can *. tool he use Majority IX. The Decisions Are an necessary to a Is it that we resort Contriving Incentive to the which can understood Phony Utilities, Withholding of * * * Certainly, the non-skilled? Applications, Information public concerned, it insofar as the is Delay in Disclosure of New appropriate would be wiser and more Compounds simply state the new shortly When consistent after is as an intermediate useful statutory construction of preparing compounds. term “use- In other prevailed ful” ‍​​‌‌‌​‌‌‌​​​‌‌‌​‌​​​​​​​‌​‌​​​​‌​‌‌​‌‌​​‌​​‌​​‌‌‍readily which had art, 1790 be- since the mechanical claims are gan upset by to be the Patent Office— of ma- allоwed to individual members anywhere and it was though not altered else that chines even the member majority opinion my phrase, meaning The Manson ends with been could not have literary completely a flourish in the form of a sen more inverted. is to the Ruschig, I opera- tence wrote in In re 965, 970, 343 F.2d world of commerce and the actual said, system 52 CCPA I “a tion of the there- incentive system attempted must he related to the I have to relate the law Nelson, world commerce rather than to the in such cases as our decision philosophy” ; precise realm Manson, and that this case and the others so cav- ly why alierly majority. I would reverse in these cases. overruled shall Therefore, as the Court used the continue on this course. utility. majority opinion no has A valve itself direct scale and will accelerating my it is connected ineffective unless It is the effect it. contrary conduit, serves itself evil and rivet view that is a social purpose public policy. the members without to sound It is one similarly unite, “implications will a link is of a decision” inevitable * * * Similarly, ineffective. like the decision here. may chemistry, thousands there research fact spite of the regarded proceed unless cannot arts allied ineffective but themselves replenishment constant there can be methods as well converted some- tested, we have compounds to be screwing, known to the chemist new to consider failed how riveting, jointing known to the At the arts. in these tools as useful give products which con- mechanic to artificiali- we resort present time much a contribution stitute as provision justify our in order ties as does so-called arts economy and national tools of these finished machine. instance, for ex- well-being. In one background. pre- But by way much faced with So ample, writer problem practical class we on a specification then come paring a being having groupings posed by promulgated compounds the rule complex vagueness great In- the rule a Cancer which and substituents —a re- to thought reason like and no definite limits would it had stitute pre- “practical,” “sub- compounds on the had been liance terms test. “currently out, it stantial,” “specific,” sending and them ; but pared before nothing They applica- but patent are necessary available.” was file amply per trouble-makers, compounds dem- will se. claiming as time the tions testing want onstrate. institutions Biological using they compound are what know Any compound is also use- chemical they relate wish to because research ful as a material with which activity. biological Of structure New in allied is conducted. fields any utility stage at this course com- fuels are because new available dem- had been [except tools] nature testing pounds were available for research cancer since and onstrated biological fuels. New toxicants also but long time a takes serving public com- because new the utility, an- brings rarely a direct testing out pounds had for been available and utility asserted to be against had bacteria, other insects weeds. specification. plastics the New fibrous materials demonstrated carboxylate compounds had offered new chemical com- because Since pounds testing. provided easy had been for the chemist for radicals, it was public is fact well aware into they converted be how could to see compounds provision that the new utility. Ac- some direct testing purposes contributes for cordingly, hydrolyzed con- he national it wealth and realizes [would resulting into a free acid verted segment that that of it on courts did salt, being quite copper certain that progress depends upon that its so] containing compound copper would capital of new to be tested. fungicide It did. And a effect. compound pub- Each new adds to the up specification was set- written capital; doing, lic’s and in so be- it utility ting of the new com- forth comes useful. pounds intermediates for as useful fungicides, now come to crux of the matter preparation We the hydrolysis concluding paragraphs salt-forming steps in the two it were my why identify fungicide described, be will clear cannot tests and and the paragraphs apparent- source. What these describe results set forth. This were already being increasing utility is ly requirement. on an done satisfied instance, complex utility In for another fear of a demand that ring having actually pound was shown benzene to exist and that readily give provеd by beyond power sulfonated to material clincial tests possessed surface-activity, supply. even I have though compound happening so watched this new ex- for more than a pensive that the chemist decade. so far expedient knew it would never be Least of all am I about concerned employ merely it as an intermediate specification failure of a to re- production wetting-out for cite “definite” uses of at the agent. again simply This was done early stage when about little is known satisfy utility requirements. practical them. This is no cause thing surely concern because one skilled view fact that one respect can be counted on with to new in the chemical art knows how to con- compounds, once made available use any vert new material into a through patent coverage, incentive which will have the sort of without further incentive understands, non-skilled it patent system, rapid possible, dissemination of expense of valuable knowledge practical about effort, uses. time and to demonstrate even- Spreading knowledge such utility. But, is the ven- undeniably tual it creating hampers dor’s means of ought his market and di- effort increasing Judge profits. his worthy end; Smith and, rected at a more gives examples Joly of this in dis- equally his important, cheapens senting opinion. There is not the least the science. practical necessity statutory obliga- nor Clearly against public policy to so tion, determine, so far Ias can for in- sys- dynamics establish sisting patent on inclusion in the of such they operate tem that to scarce cause respect newly use information with to in- brainpower scientific and to inventive compounds. vented concocting “legal waste its time utili- Neither am concerned about the merely purpose satisfy- ties” for the ventor-producer compound of a en- new Office, the Patent uses are which joying years its market for 17 an on pursued further, never intended to be exclusive after basis he has obtained his promoting instead of honest disclosures legally single, on the basis some simply state always adequate disclosure of a use. He useful as “intermediates” and are in- this, always long has and he will do so merely supplied tended to to anothеr patentable. as And remain group research as raw the materials for why should it be otherwise? It is he further research. Such fantastic “law” gave who the world the new indulged respect is never in with to other thereby produced progress and scientific “tools” of a mechanical or art, serving public. is thus optical sort, or electronic such a as major indeed that all or even the rare laboratory balance, new electron micro- uses are foreseen. scope, oscilloscope, spectrophotometer, or example, yet they analogy for use what- To cite an from the non-steroid except provide compound field, ever and chemical how could information possible. frying pan make research Nor Teflon-coated de- does the have been worry veloped Teflon, Office about without a material games, mostly toys, today, and cosmetics. The rule “definite” countless uses majority actually incentive, not even visualized when Teflon first was furthermore, produced by conceal Pont du as material information important actually interesting Today potentialities. uses in con- it cir- templation by the researchers cles such diverse uses earth not even mention dare such flexible fuel insulators sensitive lines electrical subjects possible engines. therapeutic jet human in missiles and defin- Which suppos- supply if cannot first Who will them ite use is the public protected? of what Do we wish restrict ed wait for and real first, protection, majority would, to importance as the is it that organizations manufacturing important, those perhaps be dis- the least biological support testing application? fa- own closed in cilities? The solicitor’s brief herein ruling my view, In the Patent Office quotes extensively from a textbook on attempt to enforce this case is an steroids, Drugs,” by Norman “Steroid short-sighted impractical policy not Applezweig summarizing (1962), as fol- required by terms either literal lows: objectives it the statute or the is intended foregoing apparent It is from the accomplish, policy never deemed including steroids, aromatic ster- necessary by the Patent under Office oids, may may biologically ac- or not be years very same statutes until few activity tive, they possess even if ago applied except in the nowhere possible are diverse activities examining group, which is numerous, us- the activities legal something of a discrimination in ually drastically frequently administration. changes affected smallest Relating matter instant Consequently, the steroid molecule. case, clear from the examiner’s applica- broad references in appeal his Answer on to the board that tion to harmones aromatic steroid [sic] gaze prospect fixed that what utility re- are quirements insufficient to meet from the would be made “intermediate” statute, especially in product would or must be an ultimate end does not describe such disclosure therapeutic properties, shown either how to use the invention terms disclosed, be known determined and required by 35 U.S.C. nothing patentable. else would be That Accepting fact, it the first sentence as probably the trouble. started argues against legal for the more than logical conclusion, Followed to its consequences decision. idea ad becomes a reductio absurdum. sought patented inventions progress the normal course patentabil- are new and their product final arts one man’s ity dependent upon is not thera- starting often another man’s material. peutic discovery activities, of which products The a or final of manufacturer biological being others, is left to the to producer may of the bio- chemicals and not could dis- medical workers who logical researcher’s raw material and the having cover their activities without starting pharmaceutical material of the compounds supplied them to progress manufacturer. Is Progress synthesizers. chemical arts to be deemed never until achieved step chemical at a made time arts is beneficially pill? some man a swallows people. groups and often of different Why patenting should the of chemi- new group One invents the chemical com- many compounds potential cal of uses pounds. group discovers their Another industry and in medical science await therapeutic may im- others uses. Still physiological response? his favorable prove upon by modifications and them anyone How on can do research work compounding. steroids, adding subtracting and sub- stituents, The is of vast presence issue in cases or of these absence practical pub- importance to the economic examiner and solicitor tell research, lic, and profound chemical and medical us case such effects this have industry whole. The the chemical a physiological properties, on and how simple involved, question investigate to they properties, borrow can un- those really Douglas,6 phrase from Mr. less ? Justice the steroids are first made available 147, 154, Corp., Concurring 71 S.Ct. 340 U.S. & Pa The Great Atlantic Equipment Supermarket 95 L.Ed. 162. cific Tea Co. v. inventor new tion. the election of the point is inventors of is not; patent there or he will ends whether “serve the compulsion he do so and on him to is no push frontiers back the science—to Jus-, Though patent- may keep himself. chemistry.” My view, it to like may able, an invention Douglas, not be is that Harlan and tices value; patentability, give position commercial are in do it when legal nothing theory, has to do with That world. My probable that regarded. way they mercial value. It seems used to be actually regard attempt inventions observation is that patented no demanding have little or otherwise, turn out to the second them however, Many, patented, commercial value. before the first can be invention every op- horse nothing disrupt tremendous value. Not the smooth does but delay- places system do in a race those which but eration of our incentive very Therein attractive. the race disclosure of new make creating complications. find lies the incentive. can untold good in it. legislative serve does scheme How promote purpose the Constitutional “to and the X. The Sound Clash progress arts” ? of science and useful Philosophies Quid Quo Unsound Pro proposition patentees is: basic The System of the Patent your invention has market value if government laws, you men. exploit profit, not Ours is can it with if profit The basic law is the Constitution to the extent will be secured create, patent authorizes, you may right but does others have the to exclude system. Article I enumerated exploiting your One invention. Whether powers course, right is, of clause 8 of section is that en- has valuе Congress granting power secure tirely dependent invention on whether the rights right patent inventors in their exclusive But the has value. All else depend “discoveries” for limited times. value does not on the commercial Congress. is left to con- of the or on whether invention large “progress” small tribution to Congress system patent created a right de- or almost nil. The system, clearly, enacting statutes. The pends compliance conditions with the according legal rights granted is one of Congress specified by value of Congress. prescribed by to terms definitely not one them. invention right to a exists if the background stating by way This complies prerequisites. with the pro quo” “quid of the consideration power judiciary is restricted to question. construing applying the statutes specific facts, case them to divi- Not far the surface below other statutes. opinion lie diametric- in this case sion of quid ally opposed is the on what views by Congress, which The terms fixed in pro required quo of an inventor firmly govern judiciary should the as right exchange patent and the for his they govern govern- inventors, under a satisfactorily question be will never (1) laws, basically of five. ment problem clarified. is settled until this statutory The invention must in the fall transla- The have various Latin words category (2) 101. of 35 U.S.C. Under § something including what, for tions what (3) the same it be and section must new giving something, for value one for (4) useful. must unobvious It be consid- another, in mutual law the (5) it defined in 35 U.S.C. 103 and § eration. clearly required in must disclosed as to make 35 112 and 113 so as U.S.C. pro §§ quid prefer use the term I not to public. the invention available to the discussing we patent quo because in law right dealing statutory and first An invention meets the espouse is if requirements patentable simple- inven- four is a view 964 right in word “useful” been

statutory met, must unadorned has terms are unchanged The may granted, worth. the statutes since 1790. it for what unwavering in course of con- nothing about the courts There is quid in the statutes go struing been quo. look- “useful” since then has pro But if one must Story one, enough is. construction initiated Justice clear what for it is made, universally adopted effect that patentable having to the A invention been any any anybody purpose for use listed the first four conditions regard degree. As suffices, complied with, without above have been Rogers as- late quid quo required is on Patents restated it as pro of the inventor *** (Vol. 1, “utility required p. 9) the disclosure of his invention nearly approaches presumption requirement more of him as the fifth point patentability. than stat- other recited in the questioned by courts ute is seldom possible quite dis- It is is that what Office, except the Patent in cases very totally closed either or has lacks * * perpetual motion And practical But little value. or commercial category questions nos- this court pro- system operates this how the is heads,. growing trums for hair bald progress. produces dross mote Oberweger, 826, In re F.2d CCPA gold. get with the You cream cannot or are devices will not work producing without milk. There is incapable being comprehended, In way any prac- to tell ahead of time with Perrigo, re 48 F.2d 18 CCPA degree accuracy going tical which is and, being, alleged for the time cancer gift prophesy to be which. The exists cures, Citron, In CC re F.2d neither nor Office PA 852. These term cases involve the courts We which review its actions. operativeness,. “useful” in the sense of had best adhere to administration degree utility. Inoperative system according ground rules positions utility. and devices have no by Congress. laid down Any today judge undertaking or court Considering must, quid pro quo, we if degree open to hold legal point, on this it is beau- compliance consideration on the issue of system given by ties changing simply with 35 U.S.C. 101 is § through people government— the course the law been as it has right automatically valued —is century established for a half. over a given by patentee. what is His legislative that, history is clear on directly has value related to the bearing the identical term con- the same invention, of his value as determined having struction been enacted time marketplace. short, notwith- again until last reenactment standing grant patent, of a if the legislative It is true there are no mater- given govern- nothing, inventor has simple ials on 101 for the there reason given right nothing. ment has firmly was no discussion of fixed something ethers exclude from the use of codifying statute in the course no one wishes to use worthless'—eco- legislative history, 1952. There is no nomically. Nevertheless, in another as- therefore, support change from the pect system the disclosure is there construction. historical way promote serve its own up my law, To sum view progress. patentable invention when it is category (here quo named in Taking quid pro the statute this view of necessary composition matter, namely only, a it disclosure additionally becomes well), pound, Joly process in a place and to state new, (without regard requirement it is be “use- that the invention cases, degree utility), ful,” in kind or and unobvious. the context of these in quo patent wrong quid pro The for a on such make is order to clear what statutory invention, by mandate, sim- pro concept quid quo. The the other

965 only point is the in the statute at which ply disclosure. Now its full Congress injected any concept supportable in the ? ? Is other view it degree nature of is the unobviousness Judge Worley idea his articulated Chief requirement 103, require- a section dissenting pro quid quo in his about opinion injected by ment into the law Su- Nelson, opinion he in preme Court in 1850. John Graham v. (my emphasis): term and said used the Co., 1, Deere 383 U.S. at 86 S.Ct. rights rights and are valuable by earned seek should those who said, In Graham the Court S.Ct. patent monopolies. effect But net at granting patent here be to will Within the of the constitu- limits give appellants monopoly an unearned Congress grant, may, tional on a area field of substantial in the course, implement purpose the stated chemistry, others, prevent unless by selecting policy of the Framers willing infringement, are to risk judgment which in its effectuates best experimenting from also in a field the constitutional aim. open which should to all. policy give patents That is to who to those dispose quickly point To of a collateral any new, useful, disclose and unobvious law, infringe- experimental use is not statutory category. invention in the Judge Worley ment.7 expressed similar stating policy, recently most dissenting opinions sentiments his necessarily it used the word “useful” the instant he in the cases before according meaning acquired it had majority, quote which I will not law which leaves no room for officially since opinions. are not quality judges determination They resemble his conclusion in the enough quid whether there is for the Nelson dissent that quo. interpreted As Graham our has * * * opinion if the serves present statutes, presumed precedent, aas seems inevitable public has derived benefit public thе future ex- will be contemplated by Congress when the changing rights fixed for a new, useful, vention disclosed is diminishing quid pro quo far below Congress unobvious. set no further contemplated the standards conditions. Constitution and the statutes. majority’s It seems me that I' am unaware of in the standard reasoning involves the error classic concept Constitution other than thinking requires the law system statutory Congress whatever de- every promote each and invention shall vised, promote it should be one which will progress. contain no such statutes progress. Congress sys- devised such principle. Obviously, individ- whether an pre-1950 history tem and the actually progress promotes ual invention promoted arts indicates that it history. is a fact determined progress very indeed, well without practically Such a test unworkable majority’s affirmation the Patent stage application history cannot Office’s innovations in law. Congress, be foreseen. in its Therefore wisdom, “contemplated” laid down for de- As the standards tests termining statutes, they They patentability explicit. im- has posed judiciary nothing set out them or the Patent above. There determining rights by impossible “earning” patent pro- Office the about task of degree utility. ducing patent. particular how much “earns” some Mass.1813); Guild, States, F.Supp. v. 21 Fed.Cas. 7. Chesterfield v. Sawin United p. (No. 12,391) (C.C.D.Mass.1813). 838, (Ct.Cls., 1958) 141 Ct.Cl. Cutter, Mfg. Ghesebrough-Ponds. cited; Kaz Go. v. v. See cases Whittemore 1963). Inc., (C.A.2, p. (No. 17,600) (C.C.D. 317 F.2d 679 Fed.Cas. dissenting high products biological appreciate possessed I is a that activ- biological hope ity, opinion properties, that there but on the had useful I rest were and, authority preparation is still in reason some as intermediates Douglas biological products having v. properties, Mr. said in Peak as Justice 43, 613, States, United 353 U.S. 77 S.Ct. useful in and were were steroid research veterinary applica- often L.Ed.2d “common sense that useful medical good intermediates, products makes law.” tions. As certain prepara- were said to value in the be of Judge. SMITH, 6-methylated tion of aromatic steroidal possess hormones and were to others said Notice of Withdrawal biological properties as valuable such dissenting progestational opinion properties properties The shall attached my previous hor- dissent- associated with adrenocortical be substituted for the agrees opinion majority March 1967. mones. further filed proves the art evidence one skilled in the biological would be uses able to determine (dissenting'. SMITH, Judge, products claimed tests. the routine Joly, My unavoid- and in dissent here majority ably completed handed after Appellants attempted prove to may suppose be opinions, I down their products claimed new useful were fact termed, pragmatic related sense as alleged purposes persons and any persuasive function here to ordinary know skill in the art would court, folly.” However, because “Smith’s they them. were useful and how use impor- of what me to the more proofs seem to Apparently they succeeded their considerations, injustice done tant majority satisfaction majority appellants by dire challenge not established does facts consequences that will majority flow by appellants. However, majority decisions, respectfully I submit post ex dismisses these facts as but “an general agreement following. am in I “irrelevant,” affirmation,” facto as Judge dissent desire Rich’s but attempt representing “add an add some additional observations. disclo- statements usefulness to the majority Further, position is sure.” Appellants discovered, at- here appellants that because these submitted tempted claim, a new and unobvious facts, exper- there is “admission that statute invention in what embodied necessary deter- imentation would “composition one No terms of matter.” argues they uses,” mine actual not whatever “actual” succeeded doing. However, they so are denied mean.1 major- because board reasoning seems me ity allegedly assert failed to teach majority analysis in cannot withstand ordinary how to in the art those skill principles law. terms of basic products, use the section claimed appel- majority position, As I view the further, “use- did disclose cannot submit evidence for consid- lants products, ful” 101. section ordinary eration that one of skill major- products The sum and substance of the were art would know claimed ity’s appel- reasoning majority, seems to be that To the such evidence useful. spec- matter,” prohibited their lants failed to section as “new see concerning agree claimed ification I “new matter” cannot products for, any requirement of satisfy were section be added majority interprets to re- section 101 35. But to see evi- Title I fail where ordinary quire. proves base this conclusion on the dence which use, following observations. skill in the art know how to would agrees appellants 112, new, stated new section and useful unobvious infra, alloys discussion,

1. See the of new and lubricants. and unobvious matter, can section compositions dictum in Manson dis- to the Nelson matter,” possibly expressed be “new within senters’ as to views what interpretation ought be,” appellants reasonable of the statute. to crit- “law are appellants’ apparent to me evidence icized It seems proves for their lack of knowl- clearly edge chemistry that the examiner and in the art of steroid board were to under- members unable told that their of useful- disclosure simply wholly appli- products inadequate. stand the uses for the ness is Their they knowledge by majority because lacked and cation is found to be possessed skills the evidence shows were deficient ab initio. by ordinary those of art. skill this by appellants Evidence of offered facts majority “Appellants’ The states that ordinary one in the art would skill arguments recognize many to fail products find by useful is characterized compounds may possess steroid activ- no majority irrelevant, inadmis- ity whatsoever.” I find observation sible, post ex affirmation. an facto meaningless. Appellants are not so The stark truth of the matter is They naive. asserted dis- had majority to chemical construes a “law” as products possessing covered use- useful utility, or “after the occurrence of a fact activity. majority ful Thus what the [filing applica- commission of an act an saying effect is is that not be- does changes retrospectively which tion] appellants lieve and for this will reason legal consequences [patentability] or not consider evidence shows one of deed,” Black’s relations such fact or ordinary learning art, skill in the after ed.1957) (defi- Dictionary (4th Law products the claimed and their asserted law,”). post nition of “ex facto Justice uses, would how know to use them given appellants demands that products. determining whether oppоrtunity to the evidence products “useful,” majority majority aside, presum- casually casts holding appellants its restricts edly inconsistent with the because proofs knowledge stated in their conclusions wish to reach. specification to the exclusion of all in- possessed by ordinary formation those of justify majority attempts The skill in this art. holding as, spec- “the statements such ification does not intimidate even majority, me, injects it seems to spirostane the claimed confusion into the law and indorses pregnane have series themselves concerning erroneous standard ” ‘biological activity’ practice. “There is The usefulness of chemical * ** biological suggestion products what judged is henceforth to be ** properties nebulous, “general make androstanes] [the specific” versus “fly to be useful.” This seems to me dichotomy without resort what specking” specification individ- ordinary as to skill in the art would in fact products an affirmance. ual to reach conclude as Henceforth, to usefulness. if Considering specification whole as a disclosure of usefulness deemed too “general,” and in submitted view of the inquiry evidence is at an end and appellants appellants I would find sections attempt are warned not to 112to satisfied. examiner, confuse board, or this court with prove evidence of facts my explain attempted I the invention is useful in the field Joly why I inven- dissent feel chemical purposes for the asserted. being wrongfully tors are discriminated injustice against. appellants majority opinion this case I believe readily apparent. my Operating supporting views. under here is evidence they thought they Considering simple be, the law invention of an application compliance admittedly filed an lubricant there- new and unobvious eight years later, alloy, with. Now over think do not that the through majority’s apply would either rush the Office or the find alloy and trying to be “useless.” Yet both the lants are to claim “one of those conceivably can be found lubricant inactive steroids.” reasoning “useless” under Here, Joly, major- as in I find that “High majority temperature” al- here. ity misconstrues, misapprehends and loys inopera- well be and lubricants misapplies Manson, all to the denial temperatures. tivе or “useless” at low process appellants. due I therefore inventions, how- The usefulness these dissent. ever, not tested reference to be so, art; if that were one of no skill in the probably many specifications would an asser-

found to be “deficient” because useful as

tion that invention “alloy”

“lubricant” would general.” stated, Simply speci-

“too speaks ordinary skill

fication to those of ventions. Once these inventions lubricant art know how to use these in the Persons art, section ordinary given they skill and not can disclosure of experiment, alloy laymen. Application CCPA Raymond Appeal No. 7788. C. ‍​​‌‌‌​‌‌‌​​​‌‌‌​‌​​​​​​​‌​‌​​​​‌​‌‌​‌‌​​‌​​‌​​‌‌‍WALLACE. United States Court of Customs without the assistance of the inventor Appeals. and Patent skill, higher of a someone like or level of 4,May applications uses, to ascertain for the inventions. majority to me that con- seems knowledge

fuses own lack of concern-

ing requirements “steroids” with the legal

the law. for dis- see basis

tinguishing alloys steroids, between concerning use.

lubricants assertions of majority, The fact is that

personal observation, apparently is will- alloys presume and believe that ap- Further,

lubricants are useful.

parently willing presume and be-

lieve to them would be obvious products

to how such would be used. products

But here are ster- because oids, they many prod- other chemical presumed

ucts “useless” because majority personal is the belief of majority

that some “do work.” “proper”

has convinced itself required require

test “law” claiming prove he is not

one of what would “useless” term develop- invention, steroids. Chaos ment, and disclosure of inventions Wallace, pro Raymond se. C. I can see arts result reasoning. flowing majority’s Schimmel, Washington, Joseph D. C. from the indulging Washington, (Joseph D. Nakamura, There F. is no record basis contrary counsel), presumptions C., Commissioner for appel- specification, assertions in the Patents. U.L.Rev. 78 notes the Govern- in a included must be ment of ment’s brief Manson accord was patent, it was almost chemical saying: ignored. pletely Publication tightens September Tolkmith last case apparently by the assumed [I]t * * * requirement up more even [prior Patent Office to 1950] demanding specific utility. [Em- were neces- * * * phasis ours.] sarily spe- and that beyond inquiry cific the success of USPQ parte Tolkmith, Ex unnecessary process was therefore (1954), Patent Board was a Office * * [My emphasis.] *. involving applica- Appeals an decision n containing containing application tion an subject authority A on this further containing claims to a Irving Marcus, Manager, Or- General allegation of use as an intermediate Examining Group, ganic Chemistry composi- parasiticide constituent Office, Group 120 of who tions, under deemed insufficient signed in this the Examiner’s Answers referring vague- 112, the board U.S.C. § case, “The author of Patent Office

Case Details

Case Name: Application of David Neville Kirk and Vladimir Petrow

Court Name: Court of Customs and Patent Appeals

Date Published: Apr 10, 1967

Citation: 376 F.2d 936

Docket Number: Patent Appeal 7522

Court Abbreviation: C.C.P.A.