# Application of Arnold N. Johnson

> Court of Customs and Patent Appeals · October 10, 1960 · 282 F.2d 370

URL: https://www.frixlaw.com/law-library/cases/9447548

## Case

- **Full name:** Application of Arnold N. JOHNSON
- **Court:** Court of Customs and Patent Appeals
- **Decided:** October 10, 1960
- **Citations:** 282 F.2d 370; 48 C.C.P.A. 733
- **Precedential status:** Published
- **Opinion:** Dissent by Kirkpatrick
- **Judges:** Kirkpatrick, Martin, Rich, Smith, William, Worley
- **Cited by:** 6 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9447548

## Opinion text

KIRKPATRICK, Judge,
with whom
WORLEY, Chief Judge, joins (dissenting).
I am unable to agree with the majority.
In order to get the benefit of the filing date of the parent application, appellant had to show that the invention here claimed was disclosed in the earlier application “in the manner provided by the first paragraph of section 112” of 35 U.S.C. The parent patent, which issued five months after the present application was filed, was for a process, and the present application is for one of the products obtainable by that process. It is not disputed that the specification of the parent patent disclosed the product of the present application, 1 but the question is whether the disclosure complied with the requirements of Section 112.
The sole 2 disclosure of the parent patent which has any bearing upon utility or manner of using is found in the second paragraph of the specification and reads: “The products of the aforesaid process are valuable as chemical intermediates for organic synthesis, for solvent uses and for the preparation of toxic substances such as insecticides, fungicides, etc.”
The examiner held that this disclosure falls short of complying with the requirements of 112 as to manner of using in that it does not specify the nature of the organic synthesis for which the claimed product is an intermediate, does, not teach what the material is a solvent for, and does not disclose how insecticides or fungicides may be prepared' therefrom. The board, confining its discussion to the disclosure relating to insecticides and fungicides, broadly sustained the examiner and quoted his grounds as to all three uses.
The majority of this court puts its decision substantially upon the grounds which were adopted in the recent decision of this court in In re Nelson and Shabica, 280 F.2d 172 , 47 CCPA -. I was unable to agree with that decision but, be that as it may, the case for the present application is far weaker than that presented in the Nelson case.
In Nelson the application disclosed not only that the claimed product was valuable as an intermediate for organic synthesis but, as stated in that opinion, the specification told what could be produced *375 by the use of the claimed compounds, namely, “that they are of a type which steroid chemists can use in well-known reactions to produce steroids of a class at least some members of which are known to have useful therapeutic properties.” Although I think that disclosure was insufficient in that it fails to point to any useful steroid which could be obtained, it is far more specific than the present one which gives not the slightest hint of what is to be synthesized or what reactions may be employed to accomplish the unrevealed synthesis or what sort of composition of matter can be obtained. Nelson at least pointed out the field in which the compounds could be used and suggested reactions. Here there is nothing.
As to the suggested use as a solvent, the product claimed in the present application is a solid which melts at almost five times the temperature of boiling water. There is no clue given in the parent patent as to how a solvent of this kind is to be used or what it will dissolve. The word “solvent” alone is so all-inclusive that it teaches nothing. It might serve as an adequate disclosure for the alkahest but not for any solvent known to modern research workers.
“One cannot read the wording of section 112 without appreciating that strong language has been used for the purpose of compelling complete disclosure.” (From the recent opinion of this court in In re Nelson and Shabica, supra, quoted by the majority in the present ease.) How can it be said that the paragraph of the application quoted contains a complete disclosure, either of the utility of the product disclosed or of the manner of using it in such “full, clear, concise and exact terms” as Section 112 calls for?
If the patent had disclosed that the product was itself toxic to insects or fungi, the case would have been different. However, there is no such disclosure. What the specification says is that the products of the process are valuable for the preparation of toxic substances such as insecticides, fungicides, etc. This is an even more meager disclosure than that of the Nelson application. It means at most that the product can be used as one ingredient of or one “intermediate” for producing a toxic substance which in turn may be used to kill insects or destroy fungi, no clue being given as to which of the millions of species of insects and fungi will be affected by it. There is nothing whatever to show what is to be done with the product or with what other chemical substances it is to be reacted in order to produce toxicity. If the meaning of “preparation” be restricted to mechanical mixing with some other substance, as appellant argues, then the disclosure is no better because it is not stated whether the compound claimed is the poison or the carrier and, from the disclosure that it is a solvent, one might suspect that its use would be as a solvent in which to dissolve some insect poison.
In view of the explicit and stringent requirements of Section 112 and of the necessity that an applicant comply with them, the court should not rewrite the application on any surmise as to what the applicant meant but did not say. In Example IV he disclosed toxic products, none of which were the product claimed in the present application.
The substance of the majority opinion is contained in the following sentence: “It is sufficient if the product is disclosed as having toxic properties and if one skilled in this art is informed, as was done here, that the product is useful as an insecticide and fungicide.” The point at which I am unable to agree is that I think that this product is not disclosed as having any toxic properties, either in the general statement of its properties or in the examples. (Example IV having been eliminated.) Of course, the requirement of 112 is a disclosure which will enable “any person skilled in the art to which it pertains to * * * use the same” and it is unnecessary to set forth minutiae of description or procedures perfectly obvious to professionals but unfamiliar to amateurs. However, compliance with Section 112 should *376 not present any great difficulties to an inventor who knows what his invention can be used for and how it promotes the useful ar*ts. I do not think that, when the inventor has said one thing the court is entitled to speculate that one skilled in the art would know that he meant something else; that when he says his invention can be used to prepare a toxic substance he meant that it is a toxic substance. To say that flour is useful in the preparation of bread is simply not the same thing as saying that flour is bread.
I would affirm the decision of the board.
. I am, therefore, assuming that the applicant is attempting to patent here a product disclosed in the specification of the parent patent. However, it should be noted that the three examples given in that patent having the empirical formula of the present product sublime above 240° C., whereas the product described in the claim of the present application does not begin to melt until a temperature of 483° C. is reached.
. Example IV, set forth in the specification, discloses a process for obtaining a product which, if chlorinated, will “yield valuable toxic products.” It will bo seen, however, that neither the reaction product which is to be chlorinated nor any of the products produced by the chlorination will be the product of the present application. For this reason Example IV cannot be relied upon to bolster up the general disclosure of utility quoted above.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9447548. Public record. Not legal advice.