The opinion
SMITH, Judge
(dissenting).
The statutory commands of 35 U.S.C. § 112 each refer to “the invention” for which a patent is sought. Here the persistent failure to determine and articulate “the invention” which is in issue, as expressly required by section 112, has compounded the confusion for the court. Appealed claim 17 is directed to “a compound” having a formula which by reason of its statement in Markush form actually encompasses what the solicitor’s brief refers to as “a number of compounds of diverse structure running into six or seven figures.” However, “the invention” with which we are here concerned may be something more than “a compound” as claimed in appealed claim 17. Thus, appellant states in his specification :
This invention relates to 2-aryl-4-thiazolidones, -1-oxides and -1,1-diox-ides, and is particularly concerned with certain 3-substituted derivatives thereof and methods for the preparation of such derivatives.
The physical embodiments of my invention have been tested by standard pharmacological evaluation procedures and found to possess psychomotor stimulatory properties and anticonvulsant properties. These compounds also have the additional advantageous property of having relatively low toxicity. The compounds where Z is S have further utility as intermediates for the preparation of the compounds where Z is SO or S02. Also the compounds where Z is SO can be used as intermediates for the preparation of the compounds where Z is S02.
*357 It seems clear to me that the rejection here is fatally defective. In the examiner’s answer it is stated:
Claim 17 stands finally rejected as failing to define the invention properly, 35 U.S.C. 112. Specifically, the claim is broader than the disclosure * * *
This rejection was affirmed by the board. As I understand the rationale of the majority opinion on what it terms “that narrow aspect of the issue,” the majority agrees with appellant. Thus the specification contains a “written description of the invention,” and it sets forth “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art * * * to make and use the same * * * ” 35 U.S.C. § 112 . Further, there is no argument that the appealed claim fails to particularly point out and distinctly claim the subject matter which the appellant regards as his invention. This, it seems to me, requires a reversal of the only ground of rejection which has been stated with the particularity required by 35 U.S.C. § 132 .
There is, however, an indistinct and somewhat murky ground of rejection which has its genesis in the above quoted portion of the specification where reference is made to the “psychomotor stimulatory properties and anticonvulsant properties” of “physical embodiments” of the invention which have “relatively low toxicity. ” Apparently considering these statements as being “the invention,” the examiner’s answer states as a further ground of rejection:
The claim is also regarded as being unduly speculative because the relatively few compounds actually prepared and tested are not adequately representative of the diverse classes of compounds which are claimed (In re Cavallito et al., 282 F.2d 357 , 48 CCPA 711; In re Grant, 304 F.2d 676 , 49 CCPA 1215; In re Cavallito et al., 1962 C. D. 607).
It seems clear that what the examiner has done is to confuse the field of asserted utility of the claimed “compound” with “the invention” being claimed. This appears rather clearly from further portions of the examiner’s answer which state:
The disclosure is also regarded as being unduly speculative with regard to utility. The compounds are stated to possess psychomotor stimulatory properties and anticonvulsant properties (specification page 1, lines 15-19). The compounds actually demonstrating such utility are shown at pages 16-17, beginning with the paragraph bridging the two pages. All of these compounds have the 3, 4-dichloro-phenyl substituent at the 2-position on the thiazolidone nucleus, which substituent is designated as “Ar” in the appealed claim. No compounds wherein “Ar” is heterocyclic are tested. There is no reasonable basis for the conclusion that all of the diverse compounds embraced by the claim would be equivalent to the very small and homogeneous group actually demonstrating such properties.
* * * In the field of therapeutics, where prediction is very limited, the scope of the claims must correspond closely to the compounds sufficiently closely related to those actually tested that their properties would be expected to be similar. The diverse classes of compounds embraced by the appealed claim are not so closely related that extrapolation of the activity of the dichlorophenyl compound to the various heterocycles is warranted. (In re Oppenauer, 143 F.2d 974 , 31 CCPA 1248; Am. Chem. Paint Co. v. Firestone, 6 Cir., 117 F.2d 927 ).
The board formulated its own statement of the rejection which, however, does not seem to me to be quite the same as the examiner’s rejection. The board stated:
Claim 17 stands rejected as failing to define the invention in the manner required by 35 U.S.C. 112. The Examiner considers that the compounds recited in claim 17 lack adequate repre *358 sentative basis in the disclosure and that the claim is accordingly too broad and unduly speculative.
Later in its opinion the board amplifies on its view of the rejection and states:
* * * We agree with the Examiner’s contention that there is no reasonable basis for a conclusion that all of the diverse compounds covered by the claim would be equivalent to the small and homogeneous group actually tested, and that the appealed claim is so broad as to cover compounds the utility or operativeness of which for the disclosed purpose is speculative. [Emphasis added.]
From the foregoing it seems to me that the real basis of the rejection is the failure of appellant to establish a reasonable basis for assuming that all compounds coming within the appealed claim would have the utility or operativeness set forth for “the small and homogeneous group actually tested,” in other words, a failure to establish utility commensurate in scope with the appealed claim. 35 U.S.C. § 101 . The requirements of section 101 and section 112 should not be confused. Whether the specification teaches one of ordinary skill in the art how to make and use the invention presents a different and independent inquiry than whether the use disclosed satisfies section 101 or whether the invention described is useful. Where the objection is, in effect, that it is not believed that the invention is operable as described or useful for the asserted purpose it seems to me that section 101 is the basis for the rejection. Whether the invention is useful, within the meaning of the law, is independent of the fact that the specification teaches one of ordinary skill in the art how to make and use the invention. Nor does satisfying section 112 prove section 101 is satisfied.
It is apparent that a rejection based on “undue breadth” of the claims fails to define which section of the Patent Act is being relied on. As the examiner and board specified that the rejection is based on section 112, it seems to me our deliberations should be confined to the consideration of the reasoning of record relevant to a rejection properly based on that section. Accordingly, as I find this reasoning to be insufficient to support a rejection under section 112, I would reverse the decision of the board.