The opinion
RICH, Judge
(dissenting).
In this twice-argued case, 1 my colleagues have already said so much that I would remain silent if I did not feel strongly that there is more to be said and that it is important to the correct decision of this case to say it.
Perhaps one of the difficulties in this case is the way the invention (which is really a two-pronged discovery) is claimed in accordance with the common practice of defining the end product in which the invention is embodied or the process of making it by claims reciting everything that is old as though it were part of the invention and including, by way of distinction, the one novel feature, without in any way pointing out in the claims either that it is the sole novelty or that it alone is what was invented or discovered. This claim practice has been going on for so long that appellants should not be penalized for using it, as it seems to me they have been. The fact remains that such claiming technique is far from compliance with the requirement of 35 U.S.C. § 112 , second paragraph, to include claims *669 The Patent Office did nothing to bring about better compliance.
*668 * * * particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. [My emphasis.]
*669 This manner of claiming has opened up the invention sought to be protected to a false and misleading analysis in both the Patent Office and this court. For example, both the majority and concurring opinions speak of admissions and concessions of the appellants that the use of TBPAA in polyester compositions to make them fire-retardant is old in the art as though appellants had asserted that to be their invention and had then been forced to back away from the assertion by citation of references unknown to them. Nothing could be further from the truth. As the examiner said in his Answer, the applicants stated on page 1 of their original specification that they were not the first to use TBPAA as a component of a polyester resin. Why, then, characterize this fact, on the basis of which the disclosure of the invention proceeded, as an “admission” or “concession”? These are words of denigration applied to people who are forced to recede from a position they have taken. Appellants never did this. It creates a false atmosphere for intelligent and fair decision.
Claims, ineffective though they may be in their traditional forms to point out distinctly what was invented — having been forced into such forms by court interpretations and Patent Office practice through the years — must nevertheless be construed in the light of the specification. What, then, did appellants describe in their specification as their invention? Their very first statement is that the art knew about making fire-retardant polyesters containing halogenated phthalic acids including tetrachloro- and tetrabromophthalic acids and anhydrides (which includes TBPAA) as the fire-retardant components. Against this background, appellants then state that their discoveries in this art fall into two categories: (1) discovery of “the astonishing superiority of the tetrabromophthalic acid anhydride [TBPAA] over the other halogenated anhydrides in the production of flame-retardant compositions when prepared in accordance with the present invention” (emphasis mine); (2) a second discovery, implied in the italicized portion of the just quoted statement, namely, that successful use of the TBPAA for this purpose has been discovered by them to depend on reducing ferric iron impurity in the TBPAA to below 5 parts per million (ppm.).
Now, clearly patentability could not be predicated on (1) above, the mere discovery of the superiority of compositions using TBPAA, in view of the acknowledged suggestions in the art that it be used for this very purpose, even though the art, having proposed its use, along with many other related compounds, had not recognized the superiority. Discovery (1), therefore, is of no legal significance, at least with respect to product claims.
As to discovery (2), which is a stated limitation in every claim, appellants clearly appear to have advanced the art, delivered a quid pro quo, by discovering something the art did not know and disclosing that discovery; and, further, so far as the record shows, there was nothing obvious to those skilled in the art about that discovery. With respect to it the art appears to have been in total darkness. It knew nothing about the practical necessity of reducing the ferric iron in the TBPAA to less than 5 ppm. This, obviously, is a matter of “purity,” a subject I will discuss presently, but first I wish to state what I think is wrong with the approaches to the problem taken by my brothers.
The majority and concurring opinions both refer to In re Allen, 324 F.2d 993 , 51 CCPA 809, misconstruing it, as I read those opinions, as standing for the proposition that solving a problem is of no moment in determining obviousness unless the problem was not only existing but known to those skilled in the art to exist. A problem is no less a problem when it has not yet been recognized. A large part of many important inventions resides in discovering that there is a problem. Two entirely different sitúa *670 tions are here being confused, (a) My understanding of Allen , representing one situation, is that if solution of a longstanding problem in the art is relied on as evidence of unobviousness, it is necessary to show knowledge of the problem by those in the art and efforts to solve it. That is not, of course, the situation here, (b) The second situation is one in which unobviousness is predicated on the discovery of an unobvious problem and its solution. That is the case we have here. We have often said that patentability may be predicated on finding the cause of a difficulty even when its cure is obvious, once it is revealed. I would add that discovering the existence of the difficulty may be fully as significant.
Judge Almond’s opinion states, and I agree, that “it would appear that appellants have made an advance in the art by recognizing a solution to an existing problem” (my emphasis), but confuses existence with art recognition in conditioning that statement on finding it to be a fact that “all TBPAA which was commercially available at the time the invention was made had a high iron content and hence was unusable in polyesterification reactions.” Of course the record shows no such fact. It does not really show that TBPAA was a “commercially available” product from more than a single source mentioned by appellants. All we know about iron (ferric iron) content of TBPAA, commercial or otherwise, is what appellants tell us in their specification, as the opinion goes on to detail, referring to appellants’ Examples III and V(a) (quoted infra). The significant fact here, however, is that the prior art references tell us nothing. I am aware of what Hoffmann tells us about removing ferric chloride from a related compound, tetrachlorophthalic acid, but I am also aware that he speaks of attaining “the degree of purity required for industrial purposes” (my emphasis), without saying what it is and, further, that all his claims refer to a “purified” compound “substantially free of impurities” (my emphasis). There is no recognition anywhere of the significance of such small amounts as 5 ppm. The one example (V), in which Hoffmann indicates the amount of FeCb he considers to be an “impurity” to be got rid of, says it is “about 3%.” That is, I believe, 30,000 ppm. Query: does his “purification” process assure there is not so much as 8 ppm. iron left, which appellants teach the art is enough to make esterification results inconsistent? This brings me to consideration of the term “pure” and its practical relation to such an amount as the “not above 5 ppm.” in the claims.
Haekh’s Chemical Dictionary, 3d Ed., states under “chemicals”:
The grade or the purity of chemicals on the market are [sic]:
C.P..................chemically pure, the highest grade.
U.S.P. or B.P..........tested to conform with the requirements
of the U. S. or British Pharmacopoeia, respectively.
A.R..................analytical reagent
pure .................of sufficient purity for general work.
tech..................a purity sufficient for technical work.
crude ................an impure grade.
The board predicated its decision largely on the notion, for which there is no support in the record other than its opinion, that
One skilled in this art would not be expected to employ an impure reactant, but would follow normal chemical practice and use a pure phthalic anhydride *671 in the esterification. Since the references are silent as to any content of ferric ion it cannot be presumed that such ion is necessarily present in the starting material. [Emphasis mine.]
It is very significant that “the references are silent” on the key fact in this case and I shall not labor the point except to reverse the board’s observation to say that in view of the silence it cannot be presumed ferric ion is necessarily absent in “pure” starting material.
The board’s statement about “normal chemical practice” is absolutely meaningless to me in the context of this case by reason of the vagueness of the term “pure.” As the above quotation from Haekh amply demonstrates, “pure” does not normally mean chemically pure for when the latter is intended it is specified. “Pure” in the usual sense is a relative term meaning, according to Hackh, “sufficient purity for general work” and is quite broad enough to encompass as much as 8 ppm. of some impurity. I find further support for this, even with respect to C.P. chemicals, in Chemicals of Commerce, Snell and Snell (Van Nostrand, 1939), p. 1:
The term C.P. stands for chemically pure. Materials bearing this label may be supposed to contain a minimum of impurities, but the term is somewhat general and does not mean specifically 100 per cent pure. Strictly speaking, no chemical is absolutely pure although the known impurities may be expressed as present to the extent of 0.0001 per cent. * * *
******
The term technical or technical grade is applied to products as they are commonly produced on a large scale. The degree of purity of technical products varies with the individual substances and depends on the ease with which contaminants are removed during the manufacturing process. Such relative terms as crude and refined are also used.
Appellants, presumably skilled in this art and using chemical terminology knowledgeably, made the following statement in their specification, apparently so far overlooked by everyone:
The brominated product [TBPPA] is obtained contaminated with an impurity, either physically absorbed or molecularly complexed, such that by the usual methods of purification the contaminant is not entirely removed. [Emphasis mine.]
It seems to me we are justified in assuming that the “pure” chemical the board expected to be used in the art would be such a one as has been subjected to the “usual methods of purification” and we are then left with the very problem, unrecognized in the art but nevertheless existing, which was discovered and solved by appellants. It is my opinion from study of the prior art references that it was a very unobvious problem or source of difficulty.
I am not able to accept Judge Almond’s attempted close reasoning in support of the majority for the further reason that it is predicated, at least in part, on a non-existent supposed “concession” by appellants that TBPAA had previously been used to form polyesters, presumably with success. The implication is that it was conceded by appellants to have been successfully used, yet we find appellants quoting from Kirk-Othmer’s Encyclopedia to the effect that “bromo- derivatives of phthalic anhydride [for fire retarding] * * * have been either unsuccessful or economically unattractive.” But aside from that reference to KirkOthmer, what the specification actually says is not that TBPAA has been used but that it has been “disclosed * * * for use” or “proposed,” which is a very different thing. Such disclosures and proposals put TBPAA legally in the prior art but this is not a real use from which, as Judge Almond attempts to do, one can deduce “that the prior art had [commercially] available TBPAA having relatively low ferric iron content.” When this deduction loses its foundation, the argument predicated on it collapses.
Equally unconvincing is the majority opinion’s attempt to reason, from the disclosures in Phillips and Wismer that *672 TBPAA can be used, that the KirkOthmer statement is unpersuasive, at least to anyone familiar with the way disclosures in patent specifications like those relied on come into being. It is quite true those two patents ignore the existence of any problem, just as though none existed. And why not, if it was not appreciated that there was one? It is easy to propose use of a chemical without knowing how it will behave. Both Phillips and Wismer merely list TBPAA among numerous possible polycarboxylic acid anhydrides which might be used. Neither indicates it was ever tried. Anyone skilled in this art could make up such a list. Such haystack disclosures are without evidentiary value. One cannot deduce anything from them, as from a commercial reality, and that is what the majority opinion is attempting.
On the other hand we have the experimental data of appellants’ Example V showing the actual effects of the ferric iron content. Its essence is as follows:
In a method of polyester preparation similar to that employed in the previous Examples, wherein 1:1:2.2 molar relationships of TBPAA, maleic anhydride and diethylene glycol were utilized, the following six samples of TBPAA were employed:
Ferric Iron Determination — PPM.
(a) TBPAA, obtained commercially from Michigan
Chemical Company ......................... 34
(b) Technical TBPAA, prepared as described in Example III ................................. 8
(c) TBPAA that had been methanol-conditioned by
the method of Example 1(a)................. 5
(d) TBPAA that had been methanol-conditioned by
the method of Example 1(a).............. 2
(e) TBPAA conditioned by the sodation method of
Example IV (a) ............................. 1.2
(f) TBPAA conditioned by the xylene crystallization
method of Example III (a) .................. 4
No polyester could be produced with the use of the Sample (a) above TBPAA component. The use of Sample (b) did not consistently produce polyesters. However, Samples (c) through (f) consistently produced polyesters as previously demonstrated in Examples I-IV, above.
The references to conditioning of the TBPAA are to special methods of purification to remove residual ferric iron disclosed in the application at bar and in other applications.
The majority’s attempt to shrug off this evidence, particularly the results obtained with Example V(b), 8 ppm. impurity, as being “equivocal” and so not showing the existence of a problem impresses me as a tour de force. Anyone running a chemical plant sees nothing “equivocal” in inability to get consistent results with a given raw material or reactant. It is such a problem as can practically lead to a plant shut-down and abandonment of a process altogether. Besides, that is exactly what the KirkOthmer publication suggested, notwithstanding the bland assumption to the contrary of patentees who never tried it.
In summary, the only question we have to decide is the obviousness of appellants’ claimed discovery of the impor *673 tance of keeping the ferric impurity in TBPAA, used to impart fire-retardant properties to polyesters, below 5 ppm. That question must be decided on the basis of what the prior art of record teaches. It cannot be disputed, it is not in fact disputed by the majority, nor was it disputed by the board, that the prior art references teach nothing on that subject. The majority view rests only on a complicated rationalization based on hindsight which attempts to show that the skill of the art would make it obvious but, for the reasons above discussed, the underpinnings of that rationalization are inadequate logically to sustain it.
I would reverse.
. The second argument was due to the fact that the judges remaining on the court when this case first came to a vote, after the death of Judge Martin, were equally divided and appellants elected to reargue it before a full court, which was created by adding Judge Kirkpatrick to the four, by designation. A full reargument was held, both parties appearing.