“One cannot read the wording of section 112 without appreciating that strong language has been used for the purpose of compelling complete disclosure”
How later courts described this case
- “One cannot read the wording of section 112 without appreciating that strong language has been used for the purpose of compelling complete disclosure”
- "The descriptions in patents are not addressed to the public generally, to lawyers or to judges, but, as section 112 says, to those skilled in the art to which the invention pertains or with which it is most nearly connected."
- “[DJescriptions in patents are not addressed to the public generally, to lawyers or to" judges, but . . to those skilled in the art to which the invention pertains or with which it is most nearly connected.”
Written by the judges who cited it.
Later courts went against this
Overruled on other grounds by Application of David Neville Kirk and Vladimir Petrow, 376 F.2d 936 (1967)
47 C.C.P.A. 1031 , 280 F.2d 172, 181 (1960), overruled on other grounds by Application of Kirk, 376 F.2d 936, 944
The opinion
MARTIN, Judge
(concurring in part).
With but a single exception I am in complete accord with the extremely well considered majority opinion. My sole disagreemnt lies with the application of the section 112 requirement, as construed by the majority, to the facts of the Bremner case.
Although it is not clear from the face of this court’s opinion in the Bremner case, the ground of rejection there appealed from was appellants’ alleged failure to comply with R.S. 4888, 1 the predecessor to section 112. R.S. 4888 read:
“Before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; * * [Emphasis added.]
In construing the requirements of R.S. 4888, with respect to how much must be said about the uses of chemical compounds in a specification wherein they are claimed, this court in the Bremner case stated that there must be “an indication of the use or uses intended.” This interpretation has been carried forward by the majority as its view of the section 112 requirement, while making clear the fact that no specific mode of communicating that information is requisite as long as the specification as filed contains it.
The Bremner specification, in my opinion, completely satisfies the applicable-statutory standard in that the disclosure gives one skilled in the art “an indication of the use or uses intended” by Bremner and his co-applicants. As filed, it stated:
“The [dihydropyran] polymers vary from viscous liquids to hard brittle solids, according to the operating conditions, such as the temperature of polymerization, polymerization catalyst and duration of polymerization. In general the longer the period of polymerization, the higher the melting point of the polymer.
“As a further feature of the present invention we have found that polymers of higher molecular weight, as indicated by higher melting point, can be obtained if the polymers, produced as hereinbefore described, are heated at tempera *189 tures above 100°C., preferably between 100°C. and 200°C., in the presence of the Friede-Crafts type catalysts hereinbefore defined.
“The quantity of catalyst present during the heating step may vary within wide limits, but it is desirable to use a quantity of catalyst smaller than that used during the polymerization step, for example a quantity about one tenth of that used in the polymerization step has been found suitable. It is desirable therefore, at the conclusion of the polymerization step to remove or destroy the catalyst present, for example by washing the polymer with boiling water, or by adding ammonia to the polymer, and subsequently to add catalyst, which may be different from that used in the initial polymerization step, in a quantity less than that used in the said polymerization step.”
With respect to the products formed as a result of the processes outlined in the examples, the disclosure reads:
“The product was a golden col-oured, highly viscous liquid, * *. [Example 1.]
“The solid mass was dried and powdered giving a yield of about 80% of a hard resinous polymer. [Example 2.]
“The precipitated solid was separated and dried by heating at 180°C. for a time just sufficient to drive off the solvent to give an almost colourless resin having a melting point of 84.5°C. [Example 3.]
"On pouring the product into boiling water and working up the emulsion produced, a resin having a melting point [of] 95 °C. was obtained. [Example 4.]
“On pouring the product into boiling water and working up the emulsion produced, a resin having a melting point of 60°C. was obtained. [Example 5.]
“The precipitated solid [from the initial polymerization] was separated and dissolved in benzene, washed with water and the benzene evaporated off. A sample of this polymer, after heating at a temperature of 180°C., for a time just sufficient to drive off final traces of the benzene, had a melting point of 91°C. Following this, 0.05% by weight of boron tri fluoride hydrate was added to the remaining polymer which was then divided into two parts: the parts were heated at temperatures of 120 °C. and 180 °C., respectively, after which the melting points of both portions were found to be higher than 200°C.”
In one of their responses to an Office Action rejecting the claims because the specification did not comply with R.S. 4888, appellants argued:
“No person skilled in the art, having applicants’ disclosure before him, could fail to appreciate the utility of applicants’ products. For example, the product of Example 2 is described as a hard resinous polymer and it is apparent that such polymers may be used to form various shaped objects or as a coating composition. Likewise, it is apparent that the products described by applicants may be used to modify known resinous polymers. These and many other uses will be obvious to one skilled in the art in view of applicants’ disclosure.” [Emphasis added.]
In another amendment applicants stated:
“* * * it would appear obvious that a new synthetic resin, such as produced by the applicants, is obviously of some utility.”
In accordance with the view the majority espouses with respect to the requirements of section 112 I feel that appellants were correct in the Bremner case, and that the information given in the specification, from which I have quoted extensively above, was sufficient to inform one skilled in the art of the areas in which the claimed polymers might ultimately have some practical utility. *190 No more than that is required under the principles set forth in the majority opinion. Therefore, although I agree with the rule announced in the Bremner case and brought forward in connection with section 112 in the instant appeal, I disagree with the application of that rule to the facts of the Bremner case and would overrule the ultimate conclusion there reached.
. The Examiner’s Statement in the Bremner appeal asserted that “The present specification fails to meet the requirements of either Section 4888 R.S. or Rule 35 of the Rules of Practice because nowhere in the specification is there a statement of what the products ■ can be ' used for." The board summarized the examiner’s position thusly, “From the description, the Examiner concludes that no practical use of the compounds is disclosed, as required by Sec. 4888, Rev. Stats., and Rule 35 (Rules of Practice).” [Emphasis added.]