noting the rule in the § 103 context and declining to extend that rule to § 102(b) rejections
How later courts described this case
- noting the rule in the § 103 context and declining to extend that rule to § 102(b) rejections
- “Appellant’s further argument that ‘some practical utility’ for [the invention] must be disclosed in the prior art before [the prior art reference] can serve as a statutory bar ... is also not persuasive”
- the key question is whether a single prior art reference “publicly discloses every material element of the claimed subject matter”
- California statute regulating health care service plan preempted
Written by the judges who cited it.
Distinguished
Distinguished by Warner-Jenkinson Co. v. Allied Chemical Corp., 477 F. Supp. 371 (1979)
571 F.2d 559, 52 CCPA 1808 (1978), is inapposite, for that case involved publication of a precise structural formula, and the Court found the patent anticipated even though one would have to turn to a second source for a method of preparing the disclosed structure.
The opinion
BALDWIN, Judge,
concurring.
I would not resolve this case on the broad “key issue” stated in the majority opinion. The issue should recognize the fact that the primary reference provided strong evidence that the described compound was made and tested. This fact is relevant to the anticipation issue. The fact exists in this case and we should not now attempt to decide future cases in which the fact does not exist.
If the issue in the case is as broad as the majority suggests. The court is abandoning our often expressed view that not every document which sets out a chemical structure. “describes” the chemical compound which has the structure. The matter is far too important to be handled as dicta. If the mere recitation of a formula “describes” a claimed compound, what life is left in Judge Rich’s statement, speaking on behalf of the court, that “a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is being patented is not the formula but the compound identified by it.” In re Papesch, 315 F.2d 381, 391 , 50 CCPA 1084, 1097, 137 USPQ 43 , 51 (1963).
A compound is described by a reference, in my view, if the reference recites the structure and recites or reliably and accurately predicts at least one significant property of the compound. In the case before us, I would treat the actual existence of the compound as legally equivalent to such a significant property.