*1 ccpa Application of John A. NELSON and Anthony C. Shabica. Appeal No. 6338. Court of
United States Customs Appeals. and Patent
June Worley, Judge, Kirkpat- Chief
rick, Judge, dissented. *2 Washington, Moore, D. C.
Clarence W. C., (Joseph Washington, Sehimmel, D. counsel), of Pat- for the Commissioner ents. *3 Association, Law American Patent C., Washington, Webb, D.
William H. Schneider, John Upham, H. John D. John City, Kelton, York Janes, New John T. R. Conn., Stamford, Harvey Edelblute, W. Ohio, Cleveland, The Chapman, L. Leland Association, Law Connecticut Patent Nor- Archer, Ames James Edwin Robert Conn., Stamford, ton, Hanrahan, John E. amicus curiae. Judge, and WORLEY, Before Chief Judges, SMITH,
RICH, MARTIN, and Judge KIRKP H. and WILLIAM argument [Original ATRICK.* before JOHNSON, Judge, and Chief O’CONNELL, RICH, WORLEY, and Judges.] (retired), JACKSON Judge. RICH, appeal from decision This affirming Appeals Office Patent Board appellants’ rejection claims 259,- patent, No. application for serial 1951, 29, “14- on 014, filed November Hydroxy Androstenes.” original opinions case were 24, 1958. The on June handed down rejection of reversed the decision court’s of time After extensions claims. stipulations, granted motion and on for Rehear- filed a Petition Patent Office ing August appellants’ 25, 1958 and on September objections thereto were filed granted petition 29, 1958. We Appellants 17, April and the Pat- additional briefs filed on Octo- ent Office 20, and 1959. Amicus curiae ber during September received were briefs the American Patent Law Associa- Patent As- the Connecticut Law tion and Philadelphia and the sociation say- filed a “Statement” Law Association ing Wenderoth, approved adopted po- Ponack, Lind & Po- A. Washington, (Harry nack, D. taken the American Patent Law C. Gold- sition counsel), appellant. in its amicus brief. Association All smith * pursuant provisions Judge NMLL, of Sec- States Senior the Eastern United Pennsylvania, designated 294(d), Title United States Code. District place Judge participate O’OON- grant patents position “use- This appellants’ limits the supported amici urged “utility” Re- ful” is the inventions decision. our us adhere to requirement al- argument of the statute. We heard November says [em- consider section 112 which American and appellants, the counsel for phasis associations, ours]: the Patent Connecticut participating. Office “The contain a shall invention, description practice, written usual our In accordance with process manner and opinions withheld our former making using full, it, such They here- publication. from formal by clear, concise, following and exact terms as to is the withdrawn. *4 any person enable the art skilled opinion have re- we of the court. While pertains, to which it opinion deci- or former vised our first our nearly connected, it is most make unchanged. sions are same, and use the shall set forth and Introduction contemplated by the best mode legal carrying evinced has inventor or issue in this case out his inven- chameleon, changeability tion.” exhib- of a iting sometimes sometimes subtle and In section 112 there are the “how to use” changes complete In introduc- of color. requirements and the “best mode” about however, say subject can, we argument which much of the in this case certainty complete ultimate with question revolves. ap- "of whether the is disclosure The Disclosure pellants’ sup- application is sufficient appeal The claims are on directed to patent. rejection port on a There no is compounds, new steroid 1 claims and 10 novelty prior art, un- no being reading: typical and obviousness or that the invention is -hydroxy-an- “1. A C-19 a14 subject category on which a patents matter drostene wherein granted. Utility the double bond is can be seems attached to the carbon atom 5. precise Patent Office be involved but the position point still obscure. is a-hydroxy-4-androstene-3, “10. 14 17-dione.” group
Appellants have disclosed compounds how to make copied by appellants novel Claim 10 was They certain Murray have also said patent 2,662,089 (is- them. et al. No. things with them can be done what about appel- after on an filed sued Appellants and the it. do how provoke filed) in order an inter- lants is this disclosure suffi- amici contend that Appellants’ specification con- ference. support the Patent following cient filed, tained, when state- right says not. isWho de- Office the use claimed ments about of the com- says ei- pends on what [emphasis pounds ours]: utility invention about the ther glycosides, such cardiac “The both, compounds, or novel to use the how digitoxigenin like, comprise and the matters. law on these what OH-group steroids contain physi- statutory form, 14-position. Important law, least at ological properties simply are attributed to In Title 35 stated. most can be syntheti- However, Code, steroids. section 101 these United States cally produced H-hydroxy- part, follows: C-19 reads, pertinent wherein the double androstenes or discovers invents “Whoever * * * is attached to carbon atom bond com- and useful new * * * known. not heretofore position matter object present subject primary therefor, “A obtain a requirements is the embodiment invention such conditions synthetically-produced compounds, title.” supra.1 rejection corresponding claims “as formula I were under lacking alia, compounds utility,” said, valuable inter These new also preparation in the intermediates applicants “The fail to show how group hydroxyl steroids wherein these intermediates can converted 14-position, products having known useful containing 14,15-double The n mere steroids properties. allegation synthesis bond, and steroids the -of conversion useful for * * * requires groupings. of which such is not there is sufficient. * * * * * * justification assuming that a product conversion androstene of the claimed “Conversion * * * analogous compound will produce useful. 14-hydroxy fatally ef- disclosure is steroids defective saturated respect require 5- by hydrogenating [the] fected A * * example by ment bond, cata- USC [§] double lytic methods.” Since board affirmed the examiner’s teaches also The acyloxy groups ground rejection, course, that, of is the *5 positions 3- 11- in the rejection which is us for con- before hydro- appellants’ can be Scharwath, sideration. 164 F.2d re 3-hydroxy lyzed corresponding to 609, 35 CCPA 763. groups oxidized keto and the latter reasoning The essence the board’s corresponding groups produce ke- affirming foregoing rejection compounds. It also teaches how tone following excerpts contained in the from group reduced to a 17-keto can be opinion: its first agent hydroxyl group of an with the aid catalytic hydrogen, appel- boro- such as sodium “There is no assertion in hydride hydride, they lithium aluminum lants’ are able following like, synthesize digitalis gly- these statements with an active setting intermediate, illustrative reaction schemes coside from their nor graph- physiological specific forth the conversions means of other ac- having hydroxyl group ic formulae. tive steroid 14-position 14,15- or with a Rejection The [Emphasis double bond. ours.] ****** rejection The board described the “ * * * through there is no evidence be- thus: “Claims 1 7 and 10 have * * * appellants rejected fore us that lacking utility.” been phasis [Em- produced ever rejection steroid from This is ours.] it af- useful * * * their rejection firmed. intermediates. The final examiner’s [Emphasis July 26, 1954, ours.]. which the board .had un- review, [emphasis ****** said der ours]: requires finally 1 “Claims 7 and an “35 U.S.C. [§] are rejected fully utility applicant lack describe how for the fully explained reasons invention and use- the and to make the last * * * contemplated mode Officeletter. the best set forth “ (cid:127) Clearly appel- carrying * * * out. fatally in view of the do this lants have failed present ap- nature of the defective not shown case because haye plication, applicants entitled * * be used how their intermediate to a single prepare useful steroid. Answer, The examiner’s conclude that a on the are unable to We board, doing stating again appeal after ob- method for would to.the general “I” is forth in 1. Formula androstenes set structural the claimed fori la of specification. having compound util- no tion of another in the art. one skilled vious to ity hardly emphasis.] said to [Board’s sense the law.” inextricably up Thus does the brief tie where cases course “There use of disclosure of how to utility because disclosed need be under section with the of util- issue well known. obvious or is either ity under section 101. disclosure, incomplete However an (as herein) in a where case petition The Patent Office rehear- necessary a full disclosure ing charged extrajudicial us an ex- invention, to- one is no better than original cursion, opinion, in our into lacking tally both it because fail bearing meaning, issues, comply 112.” with 35 U.S.C. [§] rendering section 101 and with an ad- [Emphasis ours.] visory opinion thereon which we should board, examiner, cited as did the withdraw. We considered section 101 in In re the 1950 decision of court opinion because we were of the —after al., Bremner et 182 F.2d 37 CCPA intensive, say frustrating, not to ef- regard 1032 and seemed to ground fort to determine on what controlling authority supporting rejected claims were the exam- —that point point view. We shall out later rejections iner’s ing and the board’s reason- why support the Bremner case fails to scrambling separate involved a rejection. statutory requirements that an invention Issue patentable, be useful to be and that foregoing application, comply will law, be seen with the rejection variously predicated adequately *6 the was must teach those skilled utility, utility, on the lack art how failure to show of make and use the inven- allege utility, tion. opinion failure to We are still sufficient failure of that and we comply “utility requested requirement as the therefore with in the Connecti- brief, cut expression of 35 112” amicus opinion USC retain in failure to dis- [§] our compounds. close how to of our use the claimed views as to the bear- congeries explanations Out of on this of the issues of both as sections 101 why specification allegedly 112. As the the American amicus brief “fatally points out, defective” the the Patent Office Office has taken position the appellants solicitor distilled that the statement in his have not original complied appeal 112, brief that section but it has not “ - * * why shown except by objection this is so is clear that what is utility kind disclosed, the of meant is that the which claims are based presents an upon issue under section 101 a rath- which fails er than under section description contain a written using invention, manner required by the as rehearing of In its brief the Pat- 112 of Section again Title Office stated the ent be issue to U.S.C.” requirements solely whether the of sec- standing by itself, clear, complied but with, That is tion 112 have but argue proceeds interpretation that brief then this of issue in the “applicants argument fail to real defect was that a whole in oral brief as complied intermediates be show how these that section has not been having products known use- converted to because the does not patentable properties,” ful for which a reason show that invention has to be made for the reason were not shown béen that the inven- disclosure argues not it is on the described is It under section useful useful. of the appellants’ compounds 101, into which at least that such use as is dis- that the under were to converted is insufficient closed section 101. hinges compound which of section 101 has been “since a Mention case avoided produc- inescapable. construction is an intermediate for the but this acts as therefore, Again 28, repeating cannot, in section after here The issue says, above, of he substance to a consideration be restricted use, section under how to disclosure “ * * * every it follows necessarily requires consid a 112, and patent invention, a which for requirement section eration extent, claimed, be, a certain community; must patentable, invention, 101 that beneficial to the 112, as we must be “useful.” Section use, capable for some must be matter, with “util does not deal view ity,” purpose; beneficial but when term in the sense in which utility, case, degree prerequi law define a is used larger smaller, is a whether subject not patentability. site to consideration, in deter- for Utility mining will the invention whether pat grand objective of support patent. a it is But obvious Constitu system, stated ent tion, capability for that the use some progress of the promote tois purpose beneficial is a material ele- reason, Presumably arts. determining ment in whether there very statutes, be from
our sufficiency sup- ais invention to ginning latest act in 1790 patent; port a the force the word patenta prerequisite to made it ‘useful,’ introduced into the statute and use bility new the invention be epithet ‘new,’ in connection with the However, never been re it has ful. being to determine whether the sub- patentability that there quirement for ject-matter, upon capa- whole, degree utility. any particular use, purpose ble for a early very text, On Curtis Pat To cite any advantage can be derived says, (1849) in section ents public. General rules will not sup word ‘useful’ is “The particular decide this used, purpose of posed to be cases, but the circumstances of each establishing general utility carefully examined, must be un- sufficiency invention test light principles der the held, patent. support a had been general rules founded.” *7 upon the use the same word [Emphasis ours.] 1793, patent it act of the old Patents, Ed., Curtis 4th also See merely used in contradistinction was 111, enlarging (1873) 106, page on this § is or mischievous to what frivolous theme. society. to be This was held to term alleged satisfied, if the invention Looking text, an even at earlier capable use, not and was in was jurious pat contemporaneously with the written good well-being, pol to the 1836, The Law For act of Patents ent society. icy or sound morals (1837) Phillips Chapt. Inventions Lewis, cited: v. [Fed. Lowell [Cases Subjects Patents, 14, VII, Sec. Useful 186; Cas.No.8,568], 1 Mas. Bed pages), following, (10 quoting ness Hunt, [Fed.Cas.No.1,217] v. ford y,2 of Mr. Justice a classic statement 303; Stor Ibid. Knease v. [Kneass] 139): (p. appears Schuylkill [Fed.Cas.No.7, Bank, requires is, “All that the law 875] Wash.[C.C.] phasis 12.]” [Em frivolous, not invention should preface, Phillips, referring expositions, and luminous 2. In his after search will be many parts Justice Chief Marshall some other found to volume.” says: injustice Story judges, “But it is no Justice Mr. preme was U. S. Su- jurists country pro- eminent other Court 1811-45 was also say, department of law at Harvard the law fessor He 1829-45. especially more the author of a famous has learning indebted to the was series of Story, and talents of Mr. Justice Commentaries. indefatigable records of whose re- well-being, good ‘useful’, injurious “As to term or society. courts the condi- policy, morals construed or sound expressed by liberally in- useful, is it so therefore The word it almost corporated in contradis- never serves to defeat a the act into patent. following mischievous, immoral. or rules tinction clearly Anything instance, invention promote new established: 1. For entirely de- poison people, or to not useful frivo- private bauchery, lous or worthless, facilitate or to detrimen- not patentable assassination, injurious tal the well-being, is not a or invention morality if But invention. public, or objections, of these public steers character to wide mislead the to its disadvantage. or less useful more subject whether it be 2. The of a very material ais circumstance or need not be the best most patentee, but of the interest necessary useful of its kind. public. importance If it only that it should be in some extensively will useful it si- degree. possess 3. It need not contempt lently and dis- sink into degree usefulness, the fulness, or of use- Lewis, regard. (From Lowell v. patent. claimed for it 182.) Mason [Fed.Cas.No.8568]” infringement, 4. a suit for if the proved defendants are use the in- quoted approval passage This vention described sued Appeals, Third Court of the Circuit on, estopped deny its Circuit, Kotler, v. 1947 in Cusano utility.” [Emphasis ours.] F.2d text, The classic Robinson on Patents Again page with footnote ref- at says: (1890), cases, the texts above au- erences to thor, says: Phillips, Degree Utility § Immaterial. SU1. utility exists, “When actual de- requisite of “The usefulness has gree unimportant. However contrasted with friv- been sometimes slight advantage pub- which the multiplicity olousness, and the inventor, lic have received subjects
patents has been for trivial it offers compensation; sufficient reason for by judges. his occasionally deprecated slight and as he could may triv- An invention slight advantage withhold this if apparent he being obvious and ial chose, pub- his surrender it to the considered a dis- that covery, cannot be places plane lic him on the same be trivial friv- every merit with other inventor. upon respect its effect in- olous in dustry *8 necessary Nor it is that this advan- production. A defect in tage, great small, whether or should renders the first sense directly his art subject or instru- being for a that is flow ment, from void by considered For But an an invention invention. itself. though improvement up- it is a mere very character slender aof pre-existing on instruments, arts or subject is still the latter sense of a serving incapable any pur- of province isor patent, it is not the since except integral part pose go or into the the court of invention, of different degree some element the extent or of useful- of enough an idea or means or embodies whose that the is inven- ness. highest only by can be realized useful; value how is useful advancing perfect a more it to state immaterial.” is development, still an inher- has text, Merwin’s satisfies In EL C. Patenta ent usefulness which (1883), p. bility requirement law.” [Em- of Inventions 75 the phasis ours.) states: author
180 965, pub Perrigo, In 18 re 48 F.2d CCPA text later somewhat In a century, 1323. Walker turn of lished at the chapter 1904), Ed., (5th Slug on Patents Rejectors, In A. National Inc. v. half occupies a “Utility” six and Mfg. but Corporation, Cir., 164 B. T. F.2d concepts 97-103). set pages (pp. 333, Judge 335, said, Evans “It is not the utility, a simple. possess “To forth utility governs, are extent of the but the capable thing process must be citing a utility,” or existence of some must result, producing result and that a Amer.Jurisprudence, “Patents,” Sec. “Utility good absent is Quite result.” p. citing be a recently, 546. a number can processes and devices authorities, District Court for specified perform their be used not functions, Southern District New York held that subjects patents for such proof incapacity “Absent of total is beau therefore void.” “Whatever non-operativeness defense of or non-util- gives beauty useful, because ity tiful is Tape is not available.” Technical happi pleasure kind of pleasure, is a Corp. Mining Mfg. v. Co., Minnesota & utility.” ness, happiness a kind of F.Supp. 429, having thing ex Hence, function ap let us consider whether Now Magic useful, Ruffle cept decorate is compounds, plicants’ new claimed C- Fed.Cas.No.8,948, Douglas, 1863, v.Co. 14-hydroxy-androstenes, are “useful” contrary, 2 Fish.Pat.Cas. 330. On “Utility legal above, standards discussed per negatived function if according to the information which injurious an invention is formed given specification. to us areWe good morals, health, order or the thereby these are new told andro prima society.” “A facie stenes, of a kind never before made * * utility evidence (and novelty questioned), not been has Rogers (1914), 1, page on Patents Vol. type steroid- 9, says: chemists use well-known reactions “ * * * produce utility steroids of a broadest class at least presumption approaches members of which some are known to sense nearly therapeutic point properties. Ap more have pellants’ point than other “building is that new recited in the statute questioned is seldom value to Pat- blocks” the researcher the courts or the supplied Office,except perpet- in cases of which have as inter ent cases, motion, cheaper mediates in the search ual ample, in such for ex- synthesis spark shorter routes as a arrester which of ster having vigorously stop therapeutic oids works as to similar ulti utility. locomotive, visionary, or some obvi- mate ously impracticable, scheme.” position Office seems to presently arising be a example there the have been subsequently aAs existing “practical” usefulness to some type invention one mentioned last- persons. We have class court in undefined might decision cite clear answer 826, 828, Oberweger, received 28 never 115 F.2d re to whom and for question “Useful con- invention wherein CCPA group Surely a new steroid sisting admixtures of such what?” various *9 to chemists do- marrow, things aromatic oils intermediates useful as-bone steriods, “prac- lacking utility in a research for the held was alcohol specified growing too. intermediates are Such sense purpose hair. The tical” of They under section are that “useful” the fact the “con- to referred court * * * actually placed belongs market tie- to a class of often coction anything, much, to if fore from common knowl- known.as compositions “good” for, other than ex- subject are long edge matter of what the been has making of other perimentation the humbuggery fraud.” See also much infringement. object re- important field of other the specification give the this protect at is to them Refusal search. public advantage the inven- stage dissemi- the wide their would inhibit of knowledge expiration pat- together after the the nation, with the conveys, pat- ent. The consideration the patent disclosure them which a being advantage protection ent potential the de- to be which disclosure the public-after expira- (cid:127)encourages. rived to retard its would tend This tion, necessary, progress. promote in order that rather than advantage may realized, that being androstenes, The new useful - the invention shall n research chemists be described purposes dis- for in- specification, one ac- that clearly appellants, closed quainted with art manufac- or .society contributes and their invention ture, relates, to which it with great progress of an which is art n potential nearly connected, which it is most They mankind. usefulness to only not understand the inven- ways .are new steroids which in known tion, following able, by but be steroids, thus made into other given specification, directions in the furthering development of use- drawings, with the assistance of the ful art. perform to construct the machine or com- that claimed We conclude process subject which is the meaning pounds within the are “useful” patent. objects These two a dis- there is 101 and that (cid:127)of section specification are the foundation of specification. in the closure of the regard the rules and decisions in whether turn now to We it.” * * * manner of “the the disclosure Reáding paragraph * * * the first of section using” to com- is sufficient (cid:127)of 112 of quoted ofAct at ply section 112. beginning opinion, of this will show century nothing that Specification more than a Requirements changed substance has por in this equal antiquity util with the Of add; tion of the Phillips’ statute. We ity requirement is that the statute explanation purpose, however, of its that which, provided for a public advantage a further from' 1790, 1 the act of Stat. .section specification is the addition it makes to particularity required to be of such immediately technical upon literature is or other .as would “enable workman patent, waiting suance of the without * * * person in the skilled art expiration. n make, construct, invention. or use” the this, “clearly” The board said appel- real alteration has been made No complied lants require- have not through years funda- law or in the they “fully ment describe how to requiring spe- such a mental reasons * * * make and use the invention again Quoting cification, which are two. set forth the contemplated best mode Phillips, (p. The Law Patents carrying it out.” It is not so clear to us :233): appellants, comply. have failed to objects “There are two in view in descriptions making specification. patents law As the grants public patentee monopoly, generally, addressed not judges, but,’as only damages, lawyers awards section but in- penalty says, flicts a for violation those skilled thé art to which n exclusive very equitably pertains privilege, it or with which it the-invention nearly requires that the invention shall most connected. The suffi specification, ciency be tested .so described *10 light judged (cid:127)every may, by examining by person it, of this fact and in the ¿killed conveys patentee claims, are know what the and it to those who what distinguish judge’s decide able what the-art. The task is’to <be in given by people their out man are from the disclosure whether gratitude for expressions heroes as of invention art can make the skilled in the exceptional ele- While their services. can, part of this and use it. If he pat- in the ment of factor is one subject reward with, complied statute is system, probably im- least it is ent inven- requirement one that further patent system incen- portant. is an The contemplated mode tor by the best describe things, system two tive to do calculated carrying invention. him of out his work, First, principally. stimulates it invention, appel research, and development, what Let us now examine holding discovery by prospect of in their out the lants have disclosed exchange compounds profit. Second, and as how to about and their new fully patent protection, it First, they de condition of the use them. have invention. compounds how secures a full disclosure scribed their and of place question Promotion takes make has rais of useful arts them. been No Secondly, through ed “best as to as to the this. two the combination these of * * * carrying mode their doing out” factors, and the the work invention, com- their invention is the new disclosure In the the results thereof. pounds, something with not very to be done things, progress made nature of only way apparent big them. The in which as the result of both the out,” us, can be “carried it seems to contributions, mostly We little the latter. compounds to make get telephone modern a triode—in way has been raised jargon breakthrough” but that the best “major scientific doing appellants known to the has this —only seemingly at rare intervals. The Finally, been disclosed. we come to the little advances and butter bread invention, description of how to use the progress out to be sometimes turn i. e. the C-19 14-OH-androstenes claimed. greater importance much of thought. than first at Appellants have said to those skilled biggest contribution the the art: Use them as intermediates to system patent progress makes to tois having analogous make other steroids steady induce a flow of contributions and structures; you hydro- can do this to secure their continuous disclosure. genating the delta-5 double cat- bonds corollary, alytic you is the matter of already there methods As a which know re- publication Similarly, private the results of respect about. other reactions, fertilizes and as- above, turn to which we referred search argu- Accepting, hydrolysis proce- other further research. sists oxidation suggested appellants’ endo, brief dures were the statement we have no description was doubt that their invention those skilled in that a the steroid art ago many years published would know of in the belief other some reactions they legally patent could use these intermediates their was, by prior ap- (and adequate course their research. Are standards pellants patent clearly Office), entitled to a dis- self-interest the Patent withholding closure? We think are. We un- have dictated would able see respect publication fatal if defect the board’s decision correct; satisfactory application for a disclosure of hern to use the in- day had to await the when would vention. the new other use of androstenes some argues Office brief The Patent disclosed had been discovered. than granting this would not abe car- of these new disclosure objective rying of the constitutional out would make them not have how to progress promoting of the useful arts. made, publication pat- either wholly disagree. contention we With They application. would have been ent system does the function to How kept and would not have secret become progress? sys- progress. promote like a We the stream think part rejection military would here affirmance medals awards which tem
183 objec- 112). eschewing any tend to defeat the constitutional While “hard “utility” tive. fast” rule on disclosure of ain specification, the court said it felt certain trying really What Patent Office is the required that the law “an assertion nothing insist on here has do utility and an indication the use or provision 112. the “how section to use” uses intended.” The case has been cited great- demanding different, is some authority proposition for this ever er, or mundane more or more commercial since.4 The board the examiner use than Just what the one disclosed. have relied support rejection on use, it to kind of dis- the unable to we have been although present apparent cover that in case. Patent satisfied Office would have been It is clear us that the above “rule” compounds, if new steroids or other fully of the Bremner case has met therefrom, possessed made thera- had They appellants’ application. have peutic activity. asserted that their new steroid com- given by the Essentially the reason pounds they are useful and have indicated affirming the re decision board that the intended use in the field appellants jection that seems chemistry steriod wherein have util- production their new from not shown the ity synthesizing as intermediates in oth- single physiologically androstenes aof Nothing compounds. er steroid itself the board active steroid. While requires Bremner case more. The Brem- tending to decisions has some rendered requires specification ner case that necessary,3 support that this is its view must “indicate” the use or uses USPQ Tolkmith, notably parte 102 Ex applicant. invention intended (1954), unpublished decision 464 appli- court held that the Bremner et al. cited entitled discussed in the article it cation, spite of its disclosure of “res- Utility Requirement in Chemical “The melting points, ins” and contained noth- Applications,” 282 38 J.P.O.S. ing indicating úse, rejection and the higher only authority (1956), cited strenuously Now, was sustained. it was opinion point of this which is argued anyone that skilled in art case, supra. court the Bremner know what would do with the “resins” disclosed, that all new chemical com- Specifica- Bremner Case and What a pounds utility have obvious as intermedi- Say Utility About Must ates, citing USPQ parte Watt, 163, Ex 63 How Use 165, article, and a 530, Lewers 4 J.P.O.S. 216, 217, case, 542, utility 182 The Bremner F.2d and hence be assumed as 1032, compounds. decided 37 CCPA this court to all new The court’s an- ground rejection sustained a applicants’ specifica- swer was that specification comply failed to tion has to indicate the intended use or (35 U.S.C., ed., 33, uses, with R.S. requirement which is a distinct predecessor possession statute “utility.” U.S.C. from the mere § say has also 3. The board entertained a con- ord that the court was mistaken in trary having utility, view in a situation marked there was no assertion of opening similarities case but for the statement of the Brem where the new were remote ner et al. was that the in pharmaceutical Upon field. Ex See vention was “new and useful.” al., parte reflection, opinion et Ladd USP2 wherein we are now of the rejection ground claims were that a mere assertion of in a utility” “lacking meaningless formality was reversed is a required by hoard. and no more than law an as novelty. only sertion We think it rea point first law discussed in filing 4. The sonable to infer from the fact of opinion patent spe applicant Bremner asserts required by useful, law to cification assert the invention is new and “utility” finding right and the factual was that unless it is both he has no to a patent. did not. We find on review of the rec 35 U.S.C. § *12 184 knowledge require- disposed sion enable” alter this sufficient “to not of We are ment, practice can- case law them One now been the the invention. which has wording however, believe, 112 with- do not the of section for a decade. We read language strong appreciating out needs elucidation. that its rationale purpose has com- been used for the of thinking on matter Much this confused pelling al- complete There disclosure. separate a failure has from resulted ways people, exists, part some of requirement of section patent protec- a selfish to obtain desire section invention be useful disclosure, making full without requirement that a shall interest, * * law, public in the process explain and manner of “the guard against. Hence section using” the invention to “enable as * * * “full, clear, description con- calls for in person * the art skilled in * * cise, “best and exact terms” and the Possibly the use the same.” permit requirement mode” does not language difficulty applying the of of only knows inventor disclose what he fact section 112 to situations diverse embodiment, retain- to be his second-best confusion, contributes for that lan to the for the best himself. guage is fit all kinds not tailored to may patented of un inventions which keeping policy and In example, der sections 100 and For spirit law, Brem the rule of the process one cannot neither “make” a and requires, minimum, ner as a process is clear that “manner and new com inventor “indicate” a use for a * * * using” apt respect to a is position. stated, As above Nelson “composition new over, More matter.”5 being this, in Shabica as an did use being generalized 112, section specific in class- termediate research on a provision is, that it leaves it the Pat adhering Bremner steroids. to the ent Office and the courts to make the however,, clear, rule we wish to make it explanation final decision on whether the that the test what the process of manner use does in fact whole communicates to skilled in one enable one skilled “make art to may, applicant art. In some cases an and use” the invention. merely by naming or his new instrument arguendo, assume, as was in fact If we is, as, material, what its use indicate argued by case, in his that all Bremner by saying example, has invented a he inherently use- chemical “match,” “hammer,” “paint,” “adhe “utility” required ful and so have sive,” “detergent.” may may He or 101, we are still section left with the go not have to further order to enable- compliance problem with section invention, depending others to use the directed existence of on its nature and on how much those of what an inventor must usefulness but ordinary skill know. In other- art quid pro quo disclose words, compliance with the law does not protection. necessarily require specific recitations may purpose description, use basic but inherent re quirement result from disclosure contain suffi properties description invention cient number make a.
a written obvious; put posses- use skilled the art where those those ordi- glossed nearly or nected, over the dif- with which it is most con- 5. Text writers applying invention, to make and law to fact use the if ficulties situations, example manufacture, as for in Walker on it is a machine or or to Patents, compound ed., referring invention, Sec. a com- Deller if position matter, perform or to to RS..488S: description process.” invention, in- if it is a “The detailed enough, full vention must be clear in, enough, exactly enough, concise This was almost the same exact . n .enough, any person edition, Walker’s first toe enable skilled sec. 115. which, it'appertains, art or science" to *13 Contrasting to Bremner how nary will know disclosure of in the art skill right rely application, on applieant with that the instant use, has a completely knowledge. be suffi- Bremner to what not silent as If it will such invention, polymers his could and did his be used for them to use cient to enable enough properties supply As this disclose as to their know-how. he must intelligent before, case one even to an enable make often said each court has guess judged as to a use. Bremner first own facts. was the must be on polymers dihydropyran. to make No case to believe our decision We anything one knew them. Nelson about opposite result with the be consistent Shabica, hand, on were not the other Bremner because reached in the case They applica- silent. included in their Bremner the differences the facts. explicit tion an statement that their com- eight dihydropyran polymers disclosed pounds making specific were for use nothing and, he said whatever since having structures, steroids certain relat- guess use, about he left it to the art to ed to the structures of own com- their to do with basis what them on the pounds, they They told disclosed. properties. He what told their he about procedures using what could be used in “resins,” polymers his solid said were compounds. only they their Not “in- did which, chemist, word is broad use, they explained dicate” a it in detail enough variety di- a wide include carry practice. and told how to it out in verse materials and which has no definite issue meaning. gold- has beclouded the products What One was a of his appellants’ nature of en, highly case is the liquid viscous in ben- soluble erroneously use, Patent Office melting which the zene and the others were solids meeting statutory regarded as not temperatures at from 60°C. above “utility.” requirements that on With is- 200 °C. One was said to be “hard” and they way, it is clear that of the sue one was out described “colorless.” No as compounds. taught use their new how to properties other than these were dis- closed. holding, do, appel as we that liquid golden, complied description section 112 in mak of a as lants highly in steroid disclosure of use benzene is clear viscous and soluble in imply engine research, mean applicable do not that and varnish we as oil compounds patents polymer. on new liquid applicants for it is to Bremner’s as assumption they argued products rest on Bremner his solid now that can inherently as intermediates obtain that were since useful are suggesting what patents “resin” which is solid at room tem- without even higher perature temper- may them or how that use melts at a be made of use holding by melting are not ature be molded We it be effected. inherently pouring solidify. it a mold to useful as But saying to no We have reason to this amounted more than be “intermediates.” change not, shape material, one can and it is some lieve applies thermoplastic to all determined in case. materials fact to be each including given butter, roofing Assuming, however, com tar and that a candle- useful, suggests wax. more would pound indicates still would be stating big applicant pieces a use than disclose be incumbent up pieces. material can be cut made from and to be how it into little what Eventually, late, but too done. What the Bremner rule Bremner sub- would showing requires mitted an shall affidavit make is that a use which possibly guessed could not those skilled the art some known to disclosure, thing namely from his that can be done a new com that “the through polymers ingredients not, silence, pound are useful as leave the polyvinyl entirely speculation compositions,” chloride or inde matter more investigation. specifically plasticizers. pendent ground should have Case evidence The Petrocarbon it, how- been received. Even without urges upon us as an Patent Office reading ever, our own precedent Pet authoritative anyone leads us conclusion Watson, U.S. Limited v.
rocarbon
knowing
plastics art,
all of
skilled in the
July
App.D.C.
decided
247 F.2d
giv-
properties
physical
the chemical and
3, 1957,
Appeals, District
the Court of
many
film,
pos-
en for the
know
would
*14
by a
was
di
of Columbia. The decision
polymers
sible uses for
and how to
dissenting
Judge Burger
court,
vided
use
The
from the
them.
case differs
opinion.
with an
Bremner case in
of informa-
the amount
given
polymers which,
tion
about the new
recognize
special
we
While
case,
sufficient
the Petrocarbon
was
to
competence
with
deal
that court to
enable those skilled in the art to use the
questions
sub
law and accord
new materials
112
hence section
was
weight
appel
to
views as
stantial
complied with.
regret
equal standing,
late court of
we
stated, we must
For the reasons above
disagree
fully
complete
ourselves
find
respectfully
accept the Petro-
decline to
majority
ques
with
on the
ment
view
precedent.
carbon case
a
it
law involved. While
deference,
entitled to
not authori
it is
In re
The Patent Officealso relies on
binding
tatively
on
966],
us. See Watson v. Perrigo, supra
one of the
[48 F.2d
Allen,
U.S.App.D.C. 5, 254
subject
F.2d 342.
few cases in
court
Since it involves
of law on
passage
utility.
says,
The
cited
fre
which that court
ours is
as well as
Office tri-
“Neither
the Patent
quently required
pass,
to
we set forth
may properly
nor the courts
bunals
particularity
with
dis
our reasons for
grant patents upon
possibil-
a mere
agreement.
things
might
ity that a device
do the
for
useful.”
case,
claimed
like the
Petrocarbon
The
question whether
case,
involved
applicability
That statement has
to
fatally
for
specification was
defective
bar
at
because it was
the facts
made
comply
section 112. The
to
with
failure
alleged invention,
of an
the context
polymers,
as-
described new
description of which the court character-
useful,
deposited from
to be
serted
comprehensible,”
ized as “not
either to it
vapors
in the form of a
cool surfaces
on
tribunals of
or to the
Office.
film
as hav-
The
was described
“film.”
had
The court
before it a device which
stability up
270°C.,
ing great thermal
incapable
clearly
being
was
used
not to be attacked
sulfuric
was said
dealing
anything and was
with
re-
150°C.,
in,
and to be insoluble
at
acid
“lacking
jection
utility
that it was
boiling
in,
visibly
swell
sol-
and not
inoperativeness.” [Emphasis
result
types
of various
Seven solvents
vents.
quotation continues,
The above
The
on
named.
case turned
were
meaning
“Neither the Constitution nor the
the term “film” which
was
contemplate
granting
statutes
well understood
those skill-
said to
upon
giving
patents
theories,
nor
though
art,
the court
in the
chose to
ed
upon
monopoly
specu-
intellectual
great ambiguity
majority
The
in it.
find
incapa-
embodied in
lations
devices
Appeals
Court of
sustained the
analysis.”
of scientific
ble
expert
refusal
receive
Court’s
District
testimony
entirely
to show
and exhibits
what
with that
We are
accord
state-
actually
ment,
specification fully describing
meant
those skilled in
but a
“film”
evidence,
us,
group
This
make a
seems
new
art.
how
chemical
containing
compounds
highly
have assisted the court
deter-
of a class
would
members,
mining
is,
fundamental
issue of what
their structure
what
agree
actually
type
was. We
disclosure
what
Judge Burger’s
go
make,
doing
about
dissent
how to
used
partes
anything
but it can
so
under consid-
be stated that
outside
is far
concerned,
Perrigo
far as
is but
there
case.
eration
regardless
applied,
one
standard to be
Practice Cases
where
how
Reduction
the issue is raised. As to
utility,
tests
establish
petition
rehear-
Patent Office
operativeness
suitability
mean
for an
herein
decision
that our
asserted
use,
asserted
an examination
the above
prior de-
a number
inconsistent
require-
cited cases will show that
partes
cases as
in inter
cisions
proof
may vary
way
ments
from no test
utility required
to establish
testing
at all to
under
con-
actual service
practice.
cited
actual reduction
Morway
Bondi,
ditions. See
su-
et al. v.
v.
al.
Muskat
are:
et
in this court
cases
pra.
partes priority
837;
disputes
Inter
in-
Schmelkes,
31 CCPA
F.2d
policy
volve
considerations with which
Marburg,
F.2d
Saklatwalla v.
*15
parte
we are not
in
Wright,
concerned
an ex
case
791;
183
v.
Kvalnes
36 CCPA
prejudge
and we cannot
Morway
what will be
1147;
al.
193,
et
F.2d
37 CCPA
required
917;
in future
All we
742,
situations.
Bondi,
F.2d
40 CCPA
203
v.
say
application
now is
418, 43
that the
before us
Mehltretter, 236 F.2d
v.
Reiners
adequately complies
Treves,
1019;
241
with the law.
Blicke v.
CCPA
718,
were
Also cited
44 CCPA 753.
F.2d
point predicated
The Patent Office
C.,
Appeals, D.
of the Court
decisions
strong-
partes
the
ly
inter
cases and
above
al.,
Gallsworthy et
et al. v.
argued
in Knutson
rehearing
petition
in
497;
304,
U.S.App.D.C.
164 F.2d
appears
by
to
fail-
have been abandoned
260,
U.S.App.D.C.
Marzall, 90
v.
Larsen
ure
hearing
mention it in the
re-
to
solicitor’s
carefully consid-
have