disavowing “the mechanistic dissection and recombination of the components of the specific illustrative compounds in every chemical reference containing them, to create hindsight anticipations with the guidance of an applicant’s disclosures, on the theory that such reconstructed disclosures describe specific compounds within the meaning of section 102”
How later courts described this case
- disavowing “the mechanistic dissection and recombination of the components of the specific illustrative compounds in every chemical reference containing them, to create hindsight anticipations with the guidance of an applicant’s disclosures, on the theory that such reconstructed disclosures describe specific compounds within the meaning of section 102”
- favoring the provision of adequate patent protection for applicant's compounds over the "mere possibility that someone might wish to use some of them for some such purpose" unrelated to applicant's purpose
- anticipation rejection was inappropriate in view of the lack of a “small recognizable class” of compounds with common properties and cautioning against applying In re Petering “to create hindsight anticipations with the guidance of an applicant’s disclosures”
- "the vague 'basket' disclosure of possible uses in the [prior art] are unimportant. What is important is the fact that the utility discovered by the appellants is not disclosed in the prior art."
Written by the judges who cited it.
The opinion
MARTIN, Justice
(concurring).
I agree with the majority opinion except insofar as it finds a section 102 rejection in the board’s decision. I do not think the board’s passing reference to In re Petering, 301 F.2d 676 , 49c CPA 993, i. e., by following Petering claims 1 and 2 “can even be said to be anticipated,” can properly be taken as a section 102 rejection. If the board meant such a passing comment to be a rejection under section 102, it should have so stated.
As the majority opinion notes, the examiner and solicitor restrict themselves to the view that the rejection is one of obviousness under section 103. In connection with the obviousness rejection, In re Petering, supra, is correctly cited by the majority since the second issue in that case was one of obviousness. The board affirmed “the decision of the Examiner rejecting the claims * * Appellants did not notify this court in their reasons of appeal of any appeal from an affirmance of a rejection based on section 102.
Thus, as the author of the Petering case, I must view as dictum the discussion in the majority opinion, under the heading “The Board’s Own Anticipation Rejection,” of that portion of In re Petering which relates to the section 102 issue. The appeal before us does not present a clear opportunity to indicate either the limits of the Petering case or its place within the scope of enabling diselosures of section 102.