“[I]t is the descriptions of the properties' and functions of the ‘air or other gas’ segmentizing medium described in appellants’ specification which would suggest to a person skilled in the art that appellants’ invention includes the use of ‘inert fluid’ broadly.”
How later courts described this case
- “[I]t is the descriptions of the properties' and functions of the ‘air or other gas’ segmentizing medium described in appellants’ specification which would suggest to a person skilled in the art that appellants’ invention includes the use of ‘inert fluid’ broadly.”
- discussing circumstances in which a species may be representative of and therefore descriptive of genus claims
- “In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus....”
- “[T]he specification clearly conveys to one skilled in the art that in this invention the characteristics of a fluid are what make the segmentizing medium work in this inven- tion.”
Written by the judges who cited it.
The opinion
BALDWIN, Judge
(dissenting in part).
I would affirm the rejection of claims 34, 37-40, 43 and 44 under the first paragraph of section 112 of the statute. The critical term in these claims, “fluid,” is a generic term, which for our purposes may be considered to be made up of two major subgeneraliquids and gases. I agree that the appellants’ specification adequately, describes the genus of gases which meet the other claimed criteria, i.e., gases which are “inert to the sample liquid,” which is how I interpret the recitation “inert gas.” However, I cannot agree that the specification contains an adequate description of the genus “fluid” under any reasonable standard. In the first place, only the subgenus “inert gases” is described, and it is apparent that one skilled in this art would not infer “inert fluids” from a description of “inert gases” alone. Secondly, it cannot be questioned that any other members of the “genus” (in this case there being only one, viz. “inert liquids”) is anywhere disclosed or implied in the specification. Thus description of the genus cannot be inferred from the supplied descriptions of its member species. The final possibility is a description of the genus itself, either in ipsis verbis, which clearly is not present here, or implied, such as through a complete description of the properties which define the genus, which the majority contends exists in this case. I submit that the majority is in error.
The following exerpt is sufficiently representative of the contents of the specification concerning the segmentizing medium (emphasis supplied):
The primary object of the present invention is to improve the precision of quantitative analysis of the samples of liquid. We have discovered that this important object can be accomplished by utilizing as much as possible liquid conduits, such as Teflon tubing, which have non-wetting surfaces instead of wettable surfaces, and *1387 by washing the flow cell between the passage of successive samples there-through with one or more bubbles of air or other gas which is inert to the liquid, transmitted through the conduits and through the flow cell, whereby contamination of one sample by another is prevented or is negligible. Further, the sample liquid which is transmitted through the flow cell during the analysis operation, at which time a record of the analysis is made, has a volume at least as large and preferably larger than the volume of the flow cell, so that there is no air in the flow cell when the liquid analysis operation is being performed. More specifically, while one or more segments or bubbles of the air or other gas are introduced into the liquid stream for separating one sample from another in the apparatus and for washing the conduits and the flow cell, it is unnecessary to remove said bubbles before transmission of the treated liquid samples through the flow cell, since the segmentation of the liquid stream by air bubbles is such that a sufficient volume of the treated sample liquid is devoid of air bubbles to enable its analysis as it flows through the flow cell. By reason of the provision of a volume of non-segmented treated liquid sample sufficiently large for analysis, namely, a volume of treated liquid sample at least as large as the volume of the flow cell, blending of segments of the same liquid sample and the need for removal of a comparatively large number of air bubbles are obviated.
Throughout the specification, only inert gas and, more often, air, which is used in the preferred embodiment, are mentioned as segmentizing mediums. There is no further discussion of the properties which those mediums have which make them useful. Thus the two properties relied on by the majority as delineating the properties of a “fluid,” i. e., (1) the ability of the medium to take “the shape of the supply lines and the flow cell through which it passes” and (2) its ability to resist “any force which may tend to change its volume,” are never disclosed or discussed in the specification at all. True enough, the inert gases described by appellants inherently would possess the first property mentioned, and presumably even the most compressable of gases would qualify as having the second property “to some extent,” as broadly phrased by the majority. But what the majority is saying is that the description requirement as to “inert fluids” is satisfied in this case, even though that genus is not specifically described by name, because it is impliedly described by the properties which define it, even though those properties are not specifically described by naming them, because those properties are impliedly described — by what? — by the fact that the members of the subgenus which is specifically described inherently possess those properties. What about those properties inherently possessed by gases which are strikingly different from those of liquids and would suggest that liquids would not be useful, such as density and viscosity?
More importantly, what kind of mental gymnastics are we going to force the skilled in the art to go through in order to determine what is described in a patent specification? The statute directs the specification to the skilled in the art, and that has two effects on the requirements for its content. Of course it establishes that the intended reader is not a babe in the woods, and that therefore the specification need not be burdened with those details which are already generally known in the art. But the intended reader is no more than one skilled in the art. He is not some master of law or logic who can be expected to inveterately expand each nuance contained in a specification into pyramids of disclosure. It ■ is a general level_of specialized knowledge which is required of him, not genius.
As to the majority’s speculation that the washing function of the segmentizing medium would be “better performed using liquid rather than gas,” it is not *1388 only not supported by the record, but is also contrary to the implications of the only pertinent teachings in the record. Kessler, whose invention it was to use a liquid segmentizing medium rather than a gas, states as follows (emphasis supplied) :
In accordance with the present invention and pursuant to one of the objects thereof, the use of air or other inert gas as the cleansing agent is dispensed with and replaced by a liquid, in order to obviate certain difficulties which may be encountered when air or other compressible fluids are employed as the cleansing agents. In this connection, it will be understood that in most instances, the use of air as the cleansing agent is to be preferred because it is highly effective for this purpose and is readily available, without cost, from the ambient atmosphere. However, in certain processes, e. g., in spectral-flame analyses, the compresibility of air or other inert gas may result in pulsations of the liquid introduced into the spectral flame and thus cause the flame to flicker or be unsteady. This objectionable result is eliminated pursuant to this invention, since liquid is incompressible.
In the final analysis, I believe that support for the majority’s position reduces to the existence of the Kessler patent, which, I agree, is some evidence that the knowledge that liquid segmentizing mediums can be used was part of the general level of skill in this art. The question becomes whether this evidence is enough on the facts of this case to establish that the use of liquid segmentizing mediums was generally known in this art. If it is, then appellants are entitled to claims directed to the use of fluids (or for that matter to liquids, which as a practical matter is the same thing here) even though appellants never mentioned those embodiments in their specification as filed, at least insofar as the description requirement is concerned. Of course, it must generally known — the statute directs the specification to those skilled in the art, not just to one or two practitioners who might happen to know it.
Before us we have appellants’ specification, which is very strictly limited to “air or other gas inert to the sample liquid.” The segmentizing medium is nowhere described as a “medium” or a “fluid.” The specification is so strictly limited as to give rise to an implication that appellants considered such a limitation important. The record before us contains twenty-five patents, twenty-four of which have disclosures which are limited to air, or other inert gas in a manner similar to appellants’ disclosure. To me that indicates that the only segmentizing medium which would “naturally occur” to one skilled in the art reading appellants’ specification is air, or other gas inert to the liquid samples. The mere existence of the Kessler patent, which states that the preferred segmentizing medium is gaseous in all but a few special cases, is not enough to overcome what the other evidence indicates is the general knowledge of those skilled in the art.
I would therefore affirm the rejection of claims 34, 37-40, 43 and 44.