In re Glass

MILLER, Judge

(concurring).

Although I generally agree with the reasoning of the majority and concur in the result reached, I believe the majority’s broadly-stated rule regarding sufficiency of the disclosure should be clarified, particularly with respect to its citation of the Argoudelis and Hawkins cases.

The Argoudelis application involved a microorganism starting material which was unknown to the art, but the court found that any person skilled in the art with access to the pending application under Rule 14 and 35 U.S.C. § 122 could obtain the microorganism from a federal government depository and practice the invention from the written disclosure as originally filed; also, that when the patent issued the microorganism would be available to the general public from the depository. The court held that the requirements of section 112 were met, namely: the requirement that the invention be capable of reduction to practice, because, as of the filing date, appellants “had solved all technological problems involved in producing the invention” and the disclosure was sufficient to permit a thorough examination by the Patent Office; and the requirement of complete public disclosure so that those skilled in the art could practice the invention— this in view of the court’s ruling that it was not necessary to have public access to the cultures prior to issuance of the patent.

The Hawkins application, which disclosed how to make the invention, involved cross-references to preexisting British applications, which disclosed utility (how to use) for the invention. These, being secret, likewise were unknown to the art. During prosecution, the actual textual material from the British application was substituted by amendment for the cross-references. It was accompanied by an affidavit in accordance with MPEP § 608.01 (p). The board affirmed the examiner’s rejection under section 112 on the basis of no disclosure of utility (how to use) and also under section 132 for the introduction of “new matter.” This court reversed, holding that the amendment did not constitute “new matter” because the material contained therein had been identified and specifically referred to in the application as filed. It determined that the reduction to practice requirement of section 112 was satisfied since, at the time the application was filed, the specification disclosed how to make the invention, and methods of use were disclosed in the cross-referenced, preexisting British applications. To use the court’s words: “ . . . no technological problems, the resolution of which would require more than ordinary skill and reasonable time, remain in order to obtain an operative, useful embodiment.” Finally, it determined that, with the amendatory material “now fully a part of the specification,” the public disclosure requirement of section 112 would be met by the specification as of the issue date.

Accordingly, it can be seen that the phrase “sufficiency of the disclosure” incorporates two separate requirements of section 112: the reduction to practice requirement, which must be satisfied as of the filing date of the application; and the public disclosure requirement (so that those skilled in the art can practice the invention), which need not be satisfied prior to issue date, as this court made clear in Argoudelis and Hawkins. Insofar as the majority’s broad rule relates to the first requirement, those cases are in full support; however, if related to the second requirement, there would be conflict. The second requirement is not involved in the case at bar, so it would be erroneous to conclude that the Argoudelis and Hawkins rule with respect to the second requirement has now been overruled. However, I believe this clarification of the majority’s opinion is needed.