Application of David Neville Kirk and Vladimir Petrow

SMITH, Judge,

(dissenting'.

My dissent here and in Joly, unavoidably completed after the majority handed down their opinions, I suppose may be termed, in a pragmatic sense as related to any persuasive function here at the court, “Smith’s folly.” However, because of what seem to me to be the more important considerations, of the injustice done to appellants by the majority and the dire consequences that will flow from the majority decisions, I respectfully submit the following. I am in general agreement with Judge Rich’s dissent but desire to add some additional observations.

Appellants here discovered, and attempted to claim, a new and unobvious invention embodied in what the statute terms a “composition of matter.” No one argues that they have not succeeded in so doing. However, they are denied a patent because the board and the majority assert they allegedly failed to teach those of ordinary skill in the art how to use the claimed products, section 112, and further, they did not disclose “useful” products, section 101.

The sum and substance of the majority’s reasoning seems to be that appellants failed to be as specific in their specification concerning what the claimed products were useful for, section 101, as the majority interprets section 101 to require. I base this conclusion on the following observations. The majority agrees appellants stated that their new products possessed high biological activity, had biological properties, were useful as intermediates in the preparation of products having biological properties, were useful in steroid research and were useful in medical or veterinary applications. As intermediates, certain products were said to be of value in the preparation of 6-methylated aromatic steroidal hormones and others were said to possess valuable biological properties such as progestational properties or properties associated with the adrenocortical hormones. The majority further agrees that the evidence proves one skilled in the art would be able to determine biological uses of the claimed products by routine tests.

Appellants attempted to prove the claimed new products were in fact useful for the purposes alleged and that persons of ordinary skill in the art would know they were useful and how to use them. Apparently they succeeded in their proofs to the satisfaction of the majority which does not challenge the facts established by appellants. However, the majority dismisses these facts as but “an ex post facto affirmation,” as “irrelevant,” and as representing an attempt to “add statements of usefulness to the disclosure.” Further, the majority position is that because appellants submitted these facts, there is an “admission that experimentation would be necessary to determine actual uses,” whatever “actual” may mean. 1

It seems to me that the reasoning of the majority cannot withstand analysis in terms of basic principles of patent law. As I view the majority position, appellants cannot submit evidence for consideration that one of ordinary skill in the art would know the claimed products were useful. To the majority, such evidence is prohibited as “new matter,” see section 132. I agree that “new matter” cannot be added to satisfy any requirement of Title 35. But I fail to see where evidence which proves one of ordinary skill in the art would know how to use, section 112, new, unobvious and useful *967 compositions of matter, section 101, can possibly be “new matter,” within any reasonable interpretation of the statute. It seems to me that appellants’ evidence proves clearly that the examiner and the board members were unable to understand the uses for the products simply because they lacked the knowledge and skills the evidence shows were possessed by those of ordinary skill in this art.

The majority states that “Appellants’ arguments fail to recognize that many steroid compounds may possess no activity whatsoever.” I find this observation meaningless. Appellants are not so naive. They asserted that they had discovered useful products possessing useful activity. Thus what the majority in effect is saying is that it does not believe appellants and for this reason will not consider evidence which shows one of ordinary skill in the art, after learning of the claimed products and their asserted uses, would know how to use them as useful products. In determining whether the products are “useful,” the majority by its holding restricts appellants to proofs of the knowledge stated in their specification to the exclusion of all information possessed by those of ordinary skill in this art.

The majority, it seems to me, injects confusion into the law and indorses an erroneous standard concerning chemical practice. The usefulness of chemical products is henceforth to be judged by a nebulous, “general versus specific” dichotomy without resort to what one of ordinary skill in the art would in fact conclude as to usefulness. Henceforth, if a disclosure of usefulness is deemed too “general,” the inquiry is at an end and appellants are warned not to attempt to confuse the examiner, the board, or this court with evidence of facts which prove the invention is useful in the field or for the purposes asserted.

The injustice to appellants in this case is readily apparent. Operating under what they thought the law to be, they filed an application in compliance therewith. Now over eight years later, through the majority’s rush to apply the dictum in Manson to the Nelson dissenters’ expressed views as to what the “law ought to be,” appellants are criticized for their apparent lack of knowledge in the art of steroid chemistry and are told that their disclosure of usefulness is wholly inadequate. Their application is found by the majority to be deficient ab initio.

Evidence of facts offered by appellants that one of ordinary skill in the art would find the products useful is characterized by the majority as irrelevant, inadmissible, and an ex post facto affirmation. The stark truth of the matter is that the majority construes a “law” as to chemical utility, “after the occurrence of a fact or commission of an act [filing an application] which retrospectively changes the legal consequences [patentability] or relations of such fact or deed,” Black’s Law Dictionary 662 (4th ed.1957) (definition of “ex post facto law,”). Justice demands that appellants be given the opportunity to present the evidence which the majority casually casts aside, presum-edly because it is inconsistent with the conclusions they wish to reach.

The majority attempts to justify its holding by statements such as, “the specification does not even intimidate that the claimed compounds of the spirostane and pregnane series themselves have ‘biological activity’ ” and “There is no suggestion * * * what biological properties make [the androstanes] * * useful.” This seems to me to be “fly specking” the specification as to individual products to reach an affirmance. Considering the specification as a whole and in view of the evidence submitted by appellants I would find sections 101 and 112 to be satisfied.

I have attempted to explain in my Joly dissent why I feel chemical inventors are being wrongfully discriminated against. I believe the majority opinion here is supporting evidence for my views. Considering the simple invention of an admittedly new and unobvious lubricant or alloy, I do not think that the Patent Office or the majority would find either *968 to be “useless.” Yet both the alloy and the lubricant can conceivably be found “useless” under the reasoning of the majority here. “High temperature” alloys and lubricants may well be inoperative or “useless” at low temperatures. The usefulness of these inventions, however, is not to be tested by reference to one of no skill in the art; if that were so, probably many specifications would be found to be “deficient” because an assertion that the invention was useful as a “lubricant” or as an “alloy” would be “too general.” Simply stated, the specification speaks to those of ordinary skill in the art, section 112, and not to laymen. Persons of ordinary skill in the alloy and lubricant art know how to use these inventions. Once given a disclosure of these inventions they can experiment, without the assistance of the inventor or someone of a like or higher level of skill, to ascertain applications and uses, for the inventions.

It seems to me that the majority confuses its own lack of knowledge concerning “steroids” with the requirements of the law. I see no legal basis for distinguishing between steroids, alloys and lubricants concerning assertions of use. The fact is that the majority, from personal observation, apparently is willing to presume and believe that alloys and lubricants are useful. Further, they apparently are willing to presume and believe that it would be obvious to them as to how such products would be used. But because the products here are steroids, they and many other chemical products are presumed “useless” because it is the personal belief of the majority that some “do not work.” The majority has convinced itself that the “proper” test required by “law” is to require the applicant to prove that he is not claiming one of what they would term “useless” steroids. Chaos in the invention, development, and disclosure of inventions in the chemical arts is the only result I can see as flowing from the majority’s reasoning. There is no record basis for indulging the presumptions of the majority contrary to assertions in the specification, that appellants are trying to claim “one of those inactive steroids.”

Here, as in Joly, I find that the majority misconstrues, misapprehends and misapplies Manson, all to the denial of due process to appellants. I therefore dissent.

. See the discussion, infra, of new and unobvious alloys and lubricants.