upholding claim language that referred to the amount of aspirin to be used in a method for stimulating growth in certain animals as “an effective amount ... for growth stimulation”
How later courts described this case
- upholding claim language that referred to the amount of aspirin to be used in a method for stimulating growth in certain animals as “an effective amount ... for growth stimulation”
Written by the judges who cited it.
The opinion
WORLEY, Chief Judge
(dissenting).
-Appellant seeks a patent on a process in which he incorporates aspirin in feed for “ruminants, poultry' and swine.”' He has been allowed those claims in which the proportion is expressed as being “from 0.002% to 0.05% by weight of aspirin.” He was denied those claims in which the aspirin ratio is expressed as being “an effective amount of aspirin for growth stimulation,” on the grounds of. “obviousness” 1 in view of the prior art, and because that language was “functional.” 2 The latter ground is clearly recognized and discussed in the solicitor’s brief.
In affirming the examiner the Board of Appeals stated:
“ * * * Wg do 'not find that the proportions of aspirin, defined in *259 functional terms are of any patentable significance, beyond the proportions set out in the allowed claims. It is noted that the tables on page 2 of the specification indicates that the rate of growth 'declines after a maximum rate of growth is attained as' the amount of aspirin in the" feed is increaséd. * *' * ” (Emphasis supplied)
While there is some doubt that the reference would. _ necessarily make . it obvious to do what appellant has done, there can be no doubt that the language, “an effective amouiit' of aspirin for growth stimulation” is functional in nature and of ho patentable significance inasmuch as it'describes''the'amount of aspirin merely in terms of the desired result, rather than by the means disclosed for producing that result.
Under certain circumstances . “functional” language is permissible, but-Congress could not have intended such indiscriminate use as here. As we said in In re Lundberg, 244 F.2d 543 , 44 CCPA 909:
“ * * * The requirement in the second paragraph of section 112 that ‘the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention’ has not been at all diminished by the addition of the third paragraph; the latter paragraph must be read in the light of the first and second paragraphs and given an interpretation consistent with their clear meaning. In re Arbeit [et al]. * * * ” [ 206 F.2d 947 , 41 CCPA 719].
Section 112 expressly requires that claims particularly point out and distinctly claim the subject matter of the invention. Appellant has done that in his allowed claims.- But the language “an effective amount of aspirin for growth stimulation” cléarly covers' more than what appellant has in fact invented. To allow a claim of such vagueness and breadth would necessarily preclude others from further development in this field, else risk infringement, and would grant appellant an unjustifiable monopoly.
I would affirm.
. 35-U.S.C. 103.'
. 35 U.S.C. 112.