# Ralston Purina Company v. Far-Mar-Co, Inc.

> Court of Appeals for the Federal Circuit · September 19, 1985 · 772 F.2d 1570

URL: https://www.frixlaw.com/law-library/cases/9473995

## Case

- **Full name:** RALSTON PURINA COMPANY, Appellee, v. FAR-MAR-CO, INC., Appellant
- **Court:** Court of Appeals for the Federal Circuit
- **Decided:** September 19, 1985
- **Citations:** 772 F.2d 1570; 227 U.S.P.Q. (BNA) 177; 1985 U.S. App. LEXIS 15275
- **Precedential status:** Published
- **Opinion:** Concurring in part by Miller
- **Judges:** Miller, Baldwin, Bennett
- **Cited by:** 146 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9473995

## How later opinions describe it (automated extraction)

- noting, in the context of claiming entitlement to the priority date of an earlier application, that the written description requirement is met if "the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of t…
- holding that “[a] party asserting invalidity based on 35 U.S. § 112 bears no less a burden and no fewer responsibilities than any other patent challenger”
- holding that ranges found in an applicant’s claims need not correspond exactly to those disclosed in a parent application
- finding willfulness where company rejected license offer without even consulting in-house counsel

## Opinion text

JACK R. MILLER, Senior Circuit Judge,
dissenting in part and concurring in part.
I cannot agree with the section in the majority opinion concerning the “written description” requirements of 35 U.S.C. § 112 , first paragraph with respect to claims 10-13, 15-28, and 32.
It is necessary that Flier be entitled to its grandparent application’s filing date under 35 U.S.C. § 120 if it is to avoid the invalidating effect of the ADM anticipating reference under 35 U.S.C. § 102 (a). To be entitled to the benefit of the date of a previously filed copending application under section 120, such application must contain a written description of the invention claimed, and of the manner and process of making and using it, as set forth in the later application to comply with the first paragraph of section 112.
The invention claimed in the later application does not have to be described in the *1578 prior application in ipsis verbis in order to satisfy the description requirement of section 112. Martin v. Johnson, 454 F.2d 746, 751 , 172 USPQ 391 , 395 (CCPA 1972); see Case v. CPC International, Inc., 730 F.2d 745, 751 , 221 USPQ 196, 201 (Fed.Cir.), cert. denied, — U.S.-, 105 S.Ct. 223 , 83 L.Ed.2d 152 , 224 USPQ 736 (1984). However, claims with no explicit disclosure must find inherent support in the prior application, Pingree v. Hull, 518 F.2d 624 , 186 USPQ 248 (CCPA 1975); and one skilled in the art, following the teaching of the prior application must be able to produce the subject matter of the later claims. In re Magerlein, 346 F.2d 609, 612 , 145 USPQ 683 , 685 (CCPA 1965); In re Nathan, 328 F.2d 1005, 1008-09 , 140 USPQ 601, 604 (CCPA 1964). Thus, the test for determining whether the disclosure complies with the written description of the invention requirement is whether it would have reasonably conveyed to one of ordinary skill that the inventor invented the later-claimed subject matter. In re Kaslow, 707 F.2d 1366, 1375 , 217 USPQ 1089, 1096 (Fed.Cir.1983). The “legal” equivalent of the claim language is thus the “necessary and only reasonable construction” to be given the disclosure in the parent application by one skilled in the art. In re Filstrup, 251 F.2d 850, 853 , 116 USPQ 440 , 442 (CCPA 1958). The result claimed must “inevitably occur.” See Kooi v. DeWitt, 546 F.2d 403, 409 , 192 USPQ 268, 273 (CCPA 1976); Pingree, 518 F.2d at 627 , 186 USPQ at 251 .
Section 112 does not refer to a mere “support” standard. In In re Smith, 458 F.2d 1389, 1394 , 173 USPQ 679, 683 (CCPA 1972), the court stated that “[t]he recent cases suggests [s¿c] a more stringent requirement for a description of the claimed invention than may have been previously applied in cases wherein the issue was framed in terms of ‘support’ for claimed subject matter.” The original disclosure may not be relied upon unless it “constitute[s] a full, clear, concise and exact description ... of the invention claimed” in the patent to one of ordinary skill. In re Wertheim, 646 F.2d 527, 538-39 , 209 USPQ 554, 565 (CCPA 1981) (“Wertheim II”).
The test of adequacy of disclosure is neither anticipation (e.g., In re Scheiber, 587 F.2d 59 , 199 USPQ 782 (CCPA 1978)) nor obviousness (see, e.g., In re Piasecki, 745 F.2d 1468, 1473 , 223 USPQ 785, 789 (Fed.Cir.1984) ). Thus, it is not proper under section 112 to require that a person of ordinary skill determine by “extrapolation, interpolation and assumptions” (Ex parte Eggleston, 159 USPQ 692 , 693 (PTO Bd.App.1967)) that disclosure in the prior application would achieve a product possessing characteristics of, or operating within the ranges of numerical values set forth in, the later claimed subject matter. In re Wertheim, 541 F.2d 257 , 191 USPQ 90 (CCPA 1976) (“Wertheim I”), later appealed, 646 F.2d 527 , 209 USPQ 554 (CCPA 1981).
To carry its burden of demonstrating insufficient disclosure, Far-Mar-Co must show that the grandparent application would not have taught persons skilled in the art that the ranges of each item claimed in the patent claims were Flier’s invention. 1
With respect to protein content of the soybean meal, Far-Mar-Co asserts that the requirements in the Flier patent claims for “vegetable material having a protein content of at least about that of solvent-extracted soybean meal” (claims 15-17 and 32) and for “solvent-extracted soybean material having a protein content at least about that of solvent-extracted soybean meal” (claims 18-26) are not inherent in the grandparent specification, since each claim limitation is an open-ended range of up to 100% protein.
The grandparent contains the following references to soybean meal protein:
It has been found that soybean meal having a low fat and high protein content may be treated to form the desirable products of the present invention. Preferably the soybean meal has a fat content as low as 0.5% and a protein con *1579 tent of approximately 50%. Such 50% protein soybean meal is well known and frequently is a by-product of the process of oil extraction from soybeans____
Example i As a specific example, 17 pounds of 50% soybean meal having a protein content of 50%, a fat content of____
Example 2
Soybean meal having a protein content of approximately 50% is the preferred meal component for use in practicing the present invention. When, however, the meal has a protein content of substantially less than 50%, it may be mixed with a high protein component which will increase the protein content of the combination to the preferred 50%.
(Emphasis supplied.) The district court noted that most of the references to protein concentrations in the grandparent application emphasize the importance of “approximately” 50% protein soybean meal. It also found that in Example 2 the grandparent indicates that soybean meal lacking sufficient protein concentration may be altered to produce the preferred percentage.
The court also referred to the Soybean Blue Book for 1964 and the Yearbook and Trading Rules for 1964-1965, in which it found reflected the knowledge in the art that the protein content of 50% solvent-extracted soybean meal was “minimum 50%” and that 44% soybean meal was also available. The court also noted that soybean protein concentrate and soybean protein isolate (not soybean meal as the majority opinion suggests), with protein concentrations over 50%, were “well known” in the art in 1964.
I am persuaded that the district court erred when it found from these references (in combination with the grandparent specification disclosure of “about 50%” and “approximately 50%” protein) that “[i]t is doubtful that a person skilled in the art would ... have construed from the parents [sic ] disclosure a maximum protein limit of about 50%.” (Finding 139.) By assuming that those of ordinary skill in 1964 would have had additional reference materials for use in creating limitations in the grandparent specification, the court erroneously applied an obviousness analysis, transgressing this court’s declaration in Piasecki, 745 F.2d at 1473 , 223 USPQ at 789 , and In re Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756 (CCPA 1977), reh’g denied (Jan. 19, 1978), that the specification itself must be the source of its interpretation (with respect to scope) for one of ordinary skill. In re Ruschig, 379 F.2d 990, 995-96 , 154 USPQ 118, 123 (CCPA 1967).
The district court also found that “[adjustment of the protein content of soybean meal to a level above 50% is reasonably conveyed where the disclosure set forth a requirement of a ‘high protein content,’ disclosed the preferred level but no upper limit____” By taking this language out of context, the court erred in its interpretation of the specification. The language should have been read in pari mate-ria with the sentence that follows it, which clearly indicates that Flier equated “high protein content” with “approximately 50%.” I disagree with the gloss imposed on the language of the grandparent application by the majority opinion. The patent claim language is not the only “necessary and reasonable” construction of the language in the grandparent application (In re Filstrup, 251 F.2d at 853 , 116 USPQ at 442), and a “level above 50%” is not the “inevitable” interpretation of “about,” “approximately,” or even “preferably” 50%. Cf. Kropa v. Robie, 187 F.2d 150, 154-55 , 88 USPQ 478, 483 (CCPA 1951).
The district court conceded that the “open-ended range of from about 50% to 100%” is “in part predicated on the assumption that solvent-extracted soybean meal contains about 50% protein.” If this means, as the majority asserts, that the district court found that the grandparent application discloses a “preferred lower limit,” such finding is clearly erroneous. The grandparent application does state that 50% protein meal was the preferred concentration. However, in view of the language in the grandparent application expressing *1580 Flier’s knowledge that “substantially less than 50%” protein was a class of protein concentrations known to him at that time (which concentrations were readily raised to the preferred 50%), I cannot agree that the grandparent taught 50% protein concentration as a “preferred lower limit.” Rather, if “preferred” is to be interpreted as a limitation, the more reasonable construction in this case would be as an upper limit. I conclude that the district court erred in finding that the Flier patent claims containing limitations on protein content of soybean meal were sufficiently disclosed in the 1964 grandparent application.
With respect to moisture content, Far-Mar-Co contends that the district court erred in concluding that the Flier claims limitations were sufficiently disclosed in the grandparent application. The 1964 grandparent recites, in the examples, 17 pounds of soybean meal “mixed with 2600 cc. of water” or 2850 cc. (It is undisputed that 2600 and 2850 cc. are 25 and 27% by weight, respectively, of the mixtures recited in the examples.) The claims limitations refer to “at least about 25% by weight” (claims 10-13) and “at least 25% by weight” (claims 15-17, 32).
These findings by the district court suffer from the same infirmities as do those with respect to protein concentration. Although written disclosure cases must be determined on a case-by-case basis (e.g., In re Driscoll, 562 F.2d 1245, 1250 , 195 USPQ 434, 438 (CCPA 1977)) Wertheim I, supra, opposes extending, without limitation, the range of the only examples stated in the prior application in a situation similar to the present claims 10-13, 15-17, and 32. See In re Ahlbrecht, 435 F.2d 908 , 168 USPQ 293 (CCPA 1971); Smith, 458 F.2d at 1394-95 , 173 USPQ at 683 (disclosure of genus and one species not sufficient description of intermediate subgenus). Certainly, genera and subgenera ranges which substantially deviate from the two species disclosed in the grandparent are not sufficiently described when there is no suggestion to those skilled in the art that such ranges of moisture are embraced by the original invention.
In reaching its conclusions, the district court relied on (1) “the practice” at Ralston in 1964, (2) “squeeze test,” and (3) knowledge of those skilled in the art of the moisture content of soybean meal. It should be pointed out that “the practice” at Ralston in 1964 does not even appear to be within the knowledge of one of ordinary skill, and neither a “squeeze test” nor the importance of the moisture content of soybean meal is suggested in the grandparent application. Cf. In re Salmon, 705 F.2d 1579, 1581 , 217 USPQ 981, 983 (Fed.Cir.1983); Wertheim I, 541 F.2d at 267-68 , 191 USPQ at 101 . I am persuaded that the district court’s findings on moisture content limitations are clearly erroneous.
Far-Mar-Co also contests the findings of the district court on the issue of the range of processing temperatures. The 1964 application recites a range of 212-360°F in one example and states elsewhere that the mixture “must be subjected to heat ... during the extrusion process.” The Flier patent claims recite “in excess of 212°F” (claim 10) and “substantially above 212°F” (claims 11-13, 15-16, 28, and 32). These findings of the court are subject to the same criticism as are those relating to moisture content. The reasoning in Wer-theim I, Ahlbrecht, and Smith applies to the limitations in claims 10, 15-16, 28, and 32. “[Ijnto the range of 212-310°F” (claim 27) requires further discussion, because this range is totally within the range explicitly disclosed in the grandparent.
The court in Wertheim II held that the disclosure in the parent of 25% to 60% solids content, without more, did not satisfy the description requirement of the later claimed 35% to 60% solids concentration, because the claimed range was a significant restriction on the invention. 646 F.2d at 538 , 209 USPQ at 565 . Analogous is claim 27, in which Ralston attempts to rely upon the grandparent’s disclosure of 212-380°F. Although it is likely, as the district court states, that “the skilled artisan would observe a practical upper limit of avoiding burning or scorching material passing through the extruder” (Finding 151), the ADM reference indicates that extrusion temperatures of 450°F were feasible in *1581 1965. Without any suggestion in the grandparent that temperatures above 310°F would damage the product, there is no “inevitable” or “necessary and only reasonable construction” of the grandparent’s disclosure as having the upper limit of 310°F in claim 27. Cf. In re Salmon, 705 F.2d at 1581 , 217 USPQ at 983 .
Finally, on the issue of situs of fiber formation (claims 10-13, 15-28, and 32), I concur with the majority opinion that Far-Mar-Co has not demonstrated that the district court clearly erred. Although Flier did not know in 1964 where fiber formation occurred, I am persuaded that one of ordinary skill in the art would have been taught by the grandparent disclosure how the invention was practiced. See Spero v. Ringold, 377 F.2d 652, 656 , 153 USPQ 726 , 728-29 (CCPA 1967); In re Magerlein, 346 F.2d at 611-12 , 145 USPQ at 685. The invention “may well [have been] disclosed without positive identification.” Petisi v. Rennhard, 363 F.2d 903, 907 , 150 USPQ 669 , 672 (CCPA 1966); see Foss v. Oglesby, 127 F.2d 312, 317 , 53 USPQ 356, 361 (CCPA 1942).
In view of the foregoing, Ralston cannot rely on Flier’s 1964 grandparent application for priority under sections 112 and 120 for claims 10-13, 15-28, and 32. Thus, these claims are rendered invalid by the ADM anticipating reference.
I do not join the majority on the issue of willfulness ‘because it is rendered moot in light of my dissent.
. The sufficiency of Far-Mar-Co's prima facie case is not at issue, since the district court evidently considered all of the evidence produced by both parties.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9473995. Public record. Not legal advice.