Amicus Curiae Brief — Brenner v. Manson

Authority to File ........0--seeeeeeceeeecereeeecers 1

Interest of the American Patent Law Association .... 2

Threshold Question of Improvident Grant of the Writ 2

Argument re Utility .....-..++sseeereereeerereeees 5

The Question of Utility as Presented in Petitioner’s

Brief as Distinguished from the Petition ........ 18

“The Single Legal Issue’’ Referred to in the Majority

Opinion of the C.C.P.A. ...-. +. eee cree errr eres 20

Comments on Various Miscellaneous Points Men-

tioned in the Government’s Brief .........+---+- 21

Conclusion ......ceeeeeeeeeeceeereeeeeneeteeeeress 26

Appendices

Appendix A... seceeeeeceeceeeeeeeeeeeereees la

Appendix Bo .....6- ceeeeeeeeeeeeeeeceeceeces 6a

Appendix Co ...e se ee eee ee cece ee eeeeeeeseeces 13a

Appendix D .....eeeeee seer eeeeeeeeeeerececes 21a

Appendix HE ¢ ...... se eee cece eee e rece cee eecees 32a

Appendix Fo .... eee e cece eee eee eee eeeeecees 4la

Appendix G ...... eee eee eee e ence cere eereeces 42a

CASES:

Barrett et al. v. Hall et al. F.C. No. 1047 (C.C.

Mass., 1818) ....---seeeeeeeees ees seeeeesesees

Bedford v. Hunt, F.C. No. 1217 (C.C.D. Mass.,

1817)... cc ccccee ccc eecccceccccceceeeeeeseees 10, 7a

Beidler v. U. S., 253 U.S. 447 (1920) ..........-. 11, 18a

Bleistein v. Donaldson Lithographing Company, 188

U.S. 239 (1908) ..... cece eeeeeeeceereeeesees 25

Carnegie Steel Co. v. Cambria Iron Co., 185 US.

403 (1902) 4,19

ii Index Continued

Page

Carroll v. The Lessee of Carroll et al., 16 How. (57

ie Re Fi) verre er Terre 21

Cheesebrough, Ex parte Robert A., 1869 C.D.18... 9

Chesterfield v. U. S., 159 F. Supp. 371 (Ct. Cls., 1958) 8

Corona Cord Tire Company v. Dovan Chemical Cor-

poration, 276 U.S. 358 (1928) ............+.... 11, 18a

Crompton v. Belknap Mills et al., F.C. No. 18,285

oe Nn SR DP re Per ere ee 12a

De Bausset, Ex parte, 1888 C.D. 66 ................ 9

Densmore v. Scofield, 102 U.S. 375 (1880) ...... 11, 14a

Diamond Rubber Company v. Censolidated Rubber

Tire Company, 220 U.S. 428 (1911) .......... 11, 17a

Dickinson, In re, 299 F’. 2d 954 (1962) ............ 6, 21

Dubois v. Kirk, 158 U.S. 58 (1895) ............ 11, 16a

Folkers et al., In re, 344 F’. 2d: 970 (1965) .......... 21

Furness, Withy & Co. v. Yang-T'sze Ins. Assoc., 242

itive dere sin ee be eivedsyseyee

Gandy v. Main Belting Company, 143 U.S. 587

eer alacdvnese<ss ae ete shone 11, 15a

General Talking Pictures Corp. v.«Western Electric

oe eS are eee 3

Grant v. Walter, 148 U.S. 547 (1893) ............ 11, 16a

Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147 (1950) .......... 22

Isaacs et al., In re, 347 F. 2d 887 (1965) .......... 21

Joly et al., Ex parte, Appeal No. 7472 ............ 18 |

Kaz Mfg. Co., Inc. v. Chesebrough-Ponds, Inc., 317 |

EE es TR REED cc cbevdussccos etd aoe és 8

Keller v. Adams-Campbell Co., 264 U.S. 314 (1924) .. 3

Krazinski et al., In re, 347 F. 2d 656 (1965) ....... 21

Layne & Bowler Corp. v. Western Well Works, Inc.,

i cn bce cay db anes He vece ve vest 3

Lowell v. Lewis, F.C. No. 8568 (C.C.D. Mass.,

RE tC Ge GeSlas detatbexeen i<sescseaees 10, 25, 6a

Mazer v. Stein, 347 U.S. 201 (1954) .............. 15

McClain v. Ortmayer, 141 U.S. 419 (1891) ...... 11, 14a

Merrill v. Youmans, 94 U.S. 568 (1876) ........... 8

Nelson, In re, 280 F. 2d 172 (1960) ............... 20

Page v. Ferry, F.C. No. 10,662 (C.C. E.D. Mich.,

0 OEE SS ee eer ree lla

Petrocarbon Ltd. v. Watson, 247 F. 2d 800 (1957) .. 21

——

—

Index Continued iii

Page

Poppenhusen v. Falke et al., F.C. No. 11,279 (C.C.

G.D. N.Y., 1861) .......cceerececeneceescceeses

Rice v. Sioux City Memorial Park Cemetery, 349

U.S. 70 (1955)... cece cece cece eee e reer eee teene

Sanders, Ex parte, F.C. No. 12,292 (C.C. D.C.,

WBGL) oc ccceccccsccccrcsscosceesceccccccecess 12a

Sawin et al. v. Guild, F.C. No. 12,391 (C.C. D. Mass.,

SUM adn da Vennh scetastnewds eer eeeweuass

Spray Refrigeration Co., Inc. v. Sea Spray Fishing,

Inc., 322 F. 2d 34 (C.A. 9, 1963) ....-.- eee rere

Telephone Cases, 126 U.S. 1 (1888) ......---..---. 19

Thompson et al. v. Haight et al., F.C. No. 13,957

(C.C. S.D. N.Y.,-1826) ...-.- see eeceeeeeerees 8a

U. S. v. Rimer, 220 U.S. 547 (1911) ...........--- 3

Werk et al. v. Parker et al., 249 U.S. 130 (1919) .... 7

Whittemore v. Cutter, F.C. No. 17,600 (C.C.D. Mass.,

Ohio, 1856) ...... cece cece cere rere ener erereee

ConsTITUTION, STATUTES AND RULEs:

Constitution of the United States, Article 1, Sec-

a Be ee cece bd eeewndsevateseeaeeens 9, 1a

Act of 1790, 1 Stat. 109 ....... cece ee eee ee eee eeee 9, 1a

Act of 1793, 1 Stat. 318 .........e eee cece eee eees la

Act of 1836, 5 Stat. 117 ........ cee ee eee eee cree ees 2a

Act of 1870, 16 Stat. 198 .........-e cece eee eeees 3a

Act of 1897, 29 Stat. 692 ........-- esses eee erences 4a

Judicial Code:

98 U.S.C. $1542 ..........ccecccccceccccce 18

Patent Act of 1952:

8b ie > Rarer 4, 5, 9,17, 21, 22, 5a, 18a

eis Coe ) Serer rr 14a

RIP. Ome Bo’ Meee PORE OEORESEREOOR COS 21, 18a

95 B.C. $188 ...ccccccccccccccccccsvcees 20

35 U.S.C. $185 ......cccccceecccecneccces 20, 24

95 U.S.C. $§ 141-4 ......-cccccccccccccccces 18

Patent Office Rule 204(b) .......-eeseeeeeeeeees 3, 6, 20

iv Index Continued

Page

Revised Statutes of 1874:

SS Beret rrer 4a

es ues gee wurepa he oe 4a

Supreme Court Rule 23(1)(c) ......-.-..eeeee eee 3

Supreme Court Rule 40(d)(2) ........-.--e+e0ee, 3

Supreme Court Rule 42(2) ............-. eee eee eee 1

MISCELLANEOUS:

Beckmann’s History of Inventions, (Fourth (1846)

Edition, Vol. I, page 371 ........-ccccccccecees

Connor, John T., Patents and the Conquest of Disease

CUDORD oie cecuyecarcvessemeverestusessves 16, 25, 21a

Corpus Juris Secundum, Vol. 69, pp. 845-6 and 849... 8

Deller’s Walker on Patents, Second Edition, 1964,

., ee” UA RPrrere rrr creer eee 10

Derry, T.K. & T.I. Williams, A Short History of

Technology, 1961, pp. 205, 206, 210, 211 ..........

Federico, P. J., Commentary on the New Patent Act,

Bf OF Se errr re a eres ee 9

Hartley, Sir Harold, The Royal Society Its Origins

and Founders, 1960, p. 116 ...........cseeeceeee 22

Hubble, Edwin, The Nature of Science, 1954, page

OF Mv co cies dénnawee cenwedbctdike¥eidgutenaes 13

Ketcham, Ralph L., Benjamin Franklin, 1965, p. 110 13

Munns, Walter A., Statement Before the Senate Sub-

committee on Patents, Trademarks and Copyrights

COE wh ccencvankecweers eae hs ‘iene aman 16, 25, 32a

Rich, Giles S., The Reiation Between Patent Practices

and the Anti-Monopoly Laws, 24 J.P.0.S. 85-106

Se SE SI: onde te ntes bxestosenevanecees 7

Rich, Giles S., Principles of Patentability, 28 Geo.

Wash. L. Rev. 393-407 (1960) ..............20. 11

Rich, Giles S., The Vague Concept of ‘‘Invention’’ as

Replaced by Sec. 103 of the 1952 Patent Act, (Ket-

tering Award Address of 1964) ................ 7

Science, 25 June 1965, page 1707 ............20000- 12

Smiles, Samuel, Men of Invention and Industry, 1885,

STUER hi vcc ocecnsnreseeuedeedvedenwectnecss 22

Story, Justice, Note on the Patent Laws, 3 Wheat. (16

U.S.) Appendix, (1818)

Index Continued Vv

Page

Story, Justice, Biographical Notes, 30 F.C. 1395 and

11 L. ed. (4 How.) 846-7 and 30 F.C. 1335-41 .... 10

Technology and Culture, Vol. I, No. 2, page 166

(Spring, 1960) .......-.seeeseee eres renter ees

Wolfe, Dael, The Support of Science im the U. 8.,

Scientific American, July 1965, pages 16 and 19

OE ONE. dacccccccnncteccvessescensenveseeeeess 12, 14

IN THE

Supreme Court of the United States

OctToBER TERM, 1965

No. 58

—_———_——_

Epwarp J. BRENNER, COMMISSIONER OF PATENTS,

Petitioner,

v.

ANDREW JOHN Manson, Respondent.

BRIEF, AMICUS CURIAE, FOR THE

AMERICAN PATENT LAW ASSOCIATION

IN SUPPORT OF THE RESPONDENT

AUTHORITY TO FILE

This amicus brief is presented to the Court under

Rule 42(2). The letters of consent from petitioner

and respondent are on file with the Clerk of the Court.

Copies are included as Appendices F and G.

INTEREST OF THE

AMERICAN PATENT LAW ASSOCIATION

The American Patent Law Association is an associ-

ation of approximately 2800 members of the bars of

many states interested in the laws relating to patents

and allied subjects. This number represents approxi-

2

mately half of the patent lawyers in the country. We

are vitally concerned that the patent law be applied in

the public interest. We respectfully submit our views

as a possible aid to this Court in deciding the impor-

tant substantive issues raised by the present case.

However, we take no position and express no views

as to the jurisdictional question presented by the Gov-

ernment’s petition and brief.

We are especially moved to file this brief because

this is the first case coming to this Court from the

‘‘patent side”’ of the United States Court of Customs

and Patent Appeals.*

We have no concern with, and express no views on,

the private interests of the respondent in this case.

THRESHOLD QUESTION OF IMPROVIDENT GRANT

OF THE WRIT

At the outset we raise the question of improvident

grant of the writ. The substantive question as pre-

sented in the petitioner’s brief differs from the sub-

stantive question as presented in the petition. Be-

sides differing from each other, both differ from what

the majority opinion in the court below characterized

as the ‘‘single legal issue’? (R. 63). So that the dif-

ferences may be readily compared, the three are set

forth below in side-by-side relations as follows:

*The United States Court of Customs and Patent Appeals

(originally the United States Court of Customs Appeals) acquired

by the Act of March 2, 1929 (Public—No. 914—70th Congress)

both its present name and its jurisdiction over appeals in patent

and trademark cases formerly vested in the then Court of Appeals

of the District of Columbia.

PEA LE

(a)

3

(b)

(¢)

‘From the Government’s

petition (p- 2) ] ;

Whether a process which

roduces @ useless product

is patentable.

[From the Government’s

Brief (p. 2)]

Whether a process is ‘‘use-

ful’’ within the meaning of

the Patent Act (and hence

atentable) merely because

it operates to produce a pro-

duct without any known

specific utility.

[From the majority opinion

in the C.C.P.A. (R. 63)]

The single legal issue pre- §

sented by this appeal is

whether an applicant for a

patent on a new process for

making a known compound

must establish a utility for

such compound, in order to

satisfy the requirements of

Rule 204(b) preparatory to

having an interference de-

elared between his applica-

tion and a prior patent.

[Emphasis in the original]

This Court has not hesitated in the past to dismiss

the writ as improvidently granted (U.S. v. himer, 220

U.S. 547 (1911); Furness, Withy & Co. v. Yang-Tsze

Ins. Assoc., 242 U.S. 430 (1917); Layne & Bowler

Corp. v. Western Well Works, Inc., 261 U.S. 387

(1923) ; Keller v. Adams-Campbell Co., Inc., 264 US.

314 (1924); and Rice v. Sioux City Memorial Park

Cemetery, 349 U.S. 70 (1955) ) if, as the case develops,

it appears that the original view as to its importance

was erroneous—even where, as here, the Government

is the petitioner (Rimer), or where the Court was

initially ‘“‘mistaken in assuming that an important

issue under general patent law was involved”’

(Keller) ; and even after previous argument and de-

cision by the Court (Rice). See also General Talking

Pictures Corp. v. Western Electric Co., 304 U.S. 175,

179 (1938) :

‘Petitioner is not here entitled to decision on any

question other than those formally presented by

its petition for the writ.”’

We are not unmindful of Rules 23(1)(c) and 40(d)

(2), but it is suggested that a subsidiary question

“fairly comprised’? within the question actually pre-

4

sented may become so narrow as to call for the appli-

cation of the doctrine of the cases cited above.

The difference in scope between the ‘‘useless prod-

uct’? of question (a) and the ‘‘product without any

known specific utility’? of question (b) is very signifi-

cant, and might well bring into operation the doctrine

of Rimer and Keller. In any event, questions (a) and

(b) are markedly different from, and broader than,

the issue said by the majority of the court below to be

the ‘‘single legal issue’’.

Moreover, as will be pointed out in greater detail

hereinafter, the petitioner’s brief (p. 5) concedes that

the Ringold and Rosenkranz publication (R. 59-61)

indicates a use for the relatively small class of organic

chemical compounds, technically known as 2-methyl-

dihydrotesterones, of which the products of the process

involved herein are members. Since that publication

is dated ‘‘November 1956”’ (R. 59) which is slightly

over a year earlier than the patentee’s filing date (R.

57) and even slightly earlier than the patentee’s

Mexican Convention date of December 17, 1956 (R. 57),

it follows that, under the doctrine of Carnegie Steel

Co. v. Cambria Tron Co., 185 U.S. 403 (1902),* the

respondent was entitled to rely upon that earlier dis-

closure of utility to satisfy even the most stringent

requirements of the Government under 35 U.S.C. § 101.

It follows for this additional reason that this Court

may well conclude that the writ was improvidently

granted.

Nevertheless, the Association wishes to present its

views as to each of questions (a) and (b) as of possi-

ble interest to the Court.

* <<) at which is common and well known is as if it were written

out in the patent... .’’ [p. 437]

5

ARGUMENT RE UTILITY

The substantive issue set forth in the second ques-

tion presented on page 2 of the Commissioner’s peti-

tion is as follows:

‘62. Whether a process which produces a useless

product is patentable.’’

That question squarely presents for decision just what

is meant by the adjective ‘‘useful’’ in 35 U.S.C. § 101.

The position of amicus is that the adjective ‘‘use-

ful”? has a very broad meaning, broad enough to in-

elude within its scope the present factual situation

where the petitioner admits that the process defined

by respondent’s process claims is adequately disclosed,

even though, arguendo, the product is assumed to be

useless.

We say arguendo advisedly, because it seems that

the real issue* involved in this case is not as stated in

the petition. Reference to the printed ‘Brief for the

Commissioner of Patents’’ in the court below reveals

the following statements relative to the issue pre-

sented to that court by the Patent Office:

‘‘Hence, the sole issue before this Court [of Cus-

toms and Patent Appeals] in this appeal is whether

the finding of insufficiency under the facts of

this case, was or was not proper.”” [page 4]

“The decision of the Board [of Appeals in the

Patent Office] indicates that the issue presented

*A review of the record shows that the substantive issue as

framed in the Government’s petition to this Court made its ap-

pearance for the first time in the second paragraph of the dissenting

opinion by Chief Judge Worley in the court below. See 333 F. 2d

at 239. (R. 71)

6

is whether the affidavits are sufficient with respect

to the showing relative to the utility of the com-

pounds produced by the process of claims .. .”

[page 5]

‘“‘Tt is submitted that the sole issue is whether the

affidavit filed Aug. 7, 1962 . . . under [Patent

Office] Rule 204(b) eliminates the deficiency of

the prior affidavits, and whether the decision of

this Court in In re Dickinson et al, 133 USPQ 39

[299 F. 2d 954 (1962)] is controlling on that

issue.’’ [page 5]

It thus rather clearly appears that the case reaches

this Court on a substantive issue different from, and

broader than, the issue or theory on which it was pre-

sented below.

Moreover, that issue seems to be framed in the form

of a “‘loaded’’ question. It assumes that which is by

no means conceded, namely, that a chemical compound

is useless, or as it is perhaps more frequently ex-

pressed in patent jargon, ‘“‘has no utility”’. It is of

course conceded that many compounds have no com-

mercial utility, but that is not equivalent to saying

that they have no utility within the meaning of the

patent law.

The case of aluminum may be cited as somewhat in

point. Aluminum was known as a substantially pure

metal for some decades prior to Hall’s discovery of

the electrolytic method employing molten cryolite as

electrolyte for recovering the metal from bauxite in a

really practicable manner. Prior to Hall’s discovery

aluminum was hardly more than a laboratory curi-

osity, obtainable only at such expense and with so much

difficulty that its cost was comparable to that of the

7

precious metals. This Court may take judicial notice*

of the more recent role of aluminum on a large scale

in machines, building construction, packaging, air-

craft, ete. ete.

The petition for the writ also attempts to raise the

spectre of ‘‘patent monopolies’’ or ‘‘monopoly”’ (page

10 of the petition) although no such issue was pre-

sented by the Patent Office to the court below.

This apparent preoccupation with the phantom issue

of monopoly** purports to be supported by or based

in part on the following reasoning in the petition for

the writ (page 10):

“The development of a process for making a use-

less product adds nothing to the sum of useful

knowledge. All that it does is, first, to enable the

developer to block further research into the use

of the product or to confine it to those whom he

authorizes . . . [Emphasis added]

The italicized portion is respectfully submitted to be

completely wrong as a matter of law. This Court at

* Werk ct al v. Parker et al, 249 U.S. 130 (1919), and cases

there cited.

** As to whether and to what extent a patent is a monopoly, see

the illuminating article by Giles S. Rich (now Associate Judge

of the United States Court of Customs and Patent Appeals) entitled

“The Relation Between Patent Practices and the Anti-Monopoly

Laws’: in 24 Jour. Pat. Off. Soc., 85-106 and 159-181 (1942).

See also Judge Giles Rich’s Kettering Award Address of 1964, en-

titled ‘‘The Vague Concept of ‘Invention’ as Replaced by Sec.

103 of the 1952 Patent Act’’, reproduced as Appendix A to the

University of Texas Law School’s Brief Amicus Curiae in Support

of 35 USC 108, in the case of William T. Graham and Graham Plow

Inc. v. John Deere Company of Kansas City and Deere & Company,

No. 11 now pending in this Court. Pages 3a-5a are of especial

interest.

8

least as early as 1876, in Merrill v. Youmans, 94 U.S.

568, 574, made it crystal clear that a process claim in

a patent covers the process only, and gives no protec-

tion to the resulting product.

It is therefore inaccurate to say that a patent on

the process could enable the patentee to ‘‘block further

research into the use of the product’’. Or, as stated

elsewhere in the petition (p. 11):

‘‘The rule adopted by the court below necessarily

closes the door to experimentation with the same

or similar processes by persons other than the

patentee or these he authorizes’? [Emphasis

added ]

Although experimental use coupled with commercial

activity may constitute infringement (Spray Refrig-

eration Co., Inc. v. Sea Spray Fishing, Inc., 322 F. 2d

34 (CA 9, 1963)), the weight of authority is that ex-

perimental use alone does not constitute infringement.

This has been held as recently as 1958 (Chesterfield

v. U. S., 159 F. Supp. 371 (Ct. Cls., 1958) ) and as far

back as 1813—see Circuit Justice Story’s opinions in

Whittemore v. Cutter, F.C. No. 17,600 (C.C.D. Mass.,

1813) and in Sawin et al. v. Guild, F.C. No. 12,391

(C.C.D. Mass., 1813). Poppenhusen v. Falke et al.,

F.C. No. 11,279 (C.C.8.D. N.Y., 1861), and Kaz Mfg.

Co., Inc. v. Chesebrough-Ponds, Inc., 317 F. 2d 679

(CA 2, 1963), are also of interest, as well as 69 Corpus

Juris Secundum, pp. 845-6 and 849.

To return to the broad question of usefulness or

utility in the law of patents, this has been obscured,

so far as the decided cases are concerned, by a recur-

rent looseness of language from which it appears upon

study that what the court really meant by usefulness

iia RR ae a AR RC el 3

9

or utility was something quite different from the issue

with which we are concerned in the present case. Thus,

in the very early cases in the lower Federal courts

where usefulness or utility is referred to in any real

depth, the context* makes it clear that what was really

under discussion was what we today would call oper-

ativeness**, or degree of novelty over the prior art, or

commercial success or acceptation, or practicality.***

The same thing, strangely enough, seems to be true of

previous opinions of this Court. Before citing the

prior cases in this Court where usefulness or utility is

discussed in a more than passing manner, attention

is invited to Appendix A where, for convenience, the

Constitutional provision (Article I, Section 8, Clause

8) as well as all of the pertinent statutory language

(from the first Patent Act of April 10, 1790 down to

the present Act) is collected. This appendix shows

that the statutory language involved in this case has

not changed significantly from 1787 down to the pres-

ent language of 35 USC § 101.****

The earliest detailed discussion of utility or useful-

ness to be found in the U. S. Supreme Court reports

* The most important of those found in the old Federal Cases are

eollected and excerpted in Appendix B.

** A good example of such a case is Ex parte De Bausset, 1888

C.D. 66, a decision by Commissioner Hall.

*** A particularly apperceptive approach in a ease of this kind

involving the idea of preventing canals from being closed over by

ice in the wintertime by heating them with steam pipes, is repre-

sented by Commissioner Fisher’s opinion in Ex parte Robert A.

Chesebrough, 1869 C.D. 18, which is likewise remarkable for its

brevity.

##** Tn his ‘Commentary on the New Patent Act’’, 35 U.S.C.A.

1 at 36, Mr. P. J. Federico pointed out that ‘‘fujsefulness, usually

referred to as utility, is a requirement under section 101.”’

10

is found in the Appendix of 3 Wheat. (16 U.S.) for

the February 1818 term, beginning at page 13 and ex-

tending to page 29.* This takes the form of a Note on

the Patent Laws by Justice Story.** Justice Story

first discussed English law, and at page 16 observed

that,

“<7, The invention must not only be new, but use-

ful; for if it be contrary to law, or mischievous,

or hurtful to trade, or generally inconvenient, it

is, by the terms of the statute, void. 3 Inst. 184.”

Later, on page 24, in discussing American law on the

subject Justice Story noted that,

‘‘By useful invention, in the patent act, is meant

an invention which may be applied to a beneficial

use in society, in contradistinction to an invention

injurious to the morals, health, or good order of

society, or frivolous and insignificant. Bedford v.

Hunt, 1 Mason’s R. Lowell v. Lewis, 1 Mason’s R.

It is not necessary to establish that it is in all

cases superior to the modes now in use for the

same purpose.”’

With Justice Story’s comments as a starting point,

we may then proceed to the following cases decided

by this Court where usefulness or utility is referred to

in a more than casual or passing manner:

* Now reproduced in Deller’s Walker on Patents, Second Edi-

tion, 1964, Vol. 1, pages 574-589.

** In a brief biographical note appearing at 30 Fed. Cas., page

1395, Justice Story is said to have ‘‘had great influence upon the

development of American admiralty, prize and patent law.’’ On

the scholarly attributes of Justice Story in general, see the ‘‘Pro-

ceedings of Court Had Upon the Death of Judge Story’’ at 11 L.

Ed. (4 How.) 846-7, and the somewhat lengthier memorial notice

at 30 Fed. Cas., pages 1335-41.

11

Seymour v. Osborne, 11 Wall. (78 U.S.) 516 (1870),

Reaping machine.

Densmore v. Scofield, 102 U.S. 375 (1880). Oil-

tank car for carrying petroleum and other like sub-

stances in bulk.

McClain v. Ortmayer, 141 U.S. 419 (1891). Pad for

horse-collars.

Gandy v. Main Belting Company, 143 U.S. 587

(1892). Belt or band for driving machinery.

Grant v. Walter, 148 U.S. 547 (1893). Reeling and

winding silk and other thread.

DuBois v. Kirk, 158 U.S. 58 (1895). Movable dams.

Diamond Rubber Company v. Consolidated Rubber

Tire Company, 220 U.S. 428 (1911). Rubber tires for

vehicle-wheels.

Beidler v. U.S., 253 U.S. 447 (1920). Photograph-

ing and developing apparatus.

Corona Cord Tire Company v. Dovan Chemical Cor-

poration, 276 U.S. 358 (1928). Vuleanization of

rubber.

Excerpts from these Supreme Court cases are col-

lected in Appendix C to this brief.

Reference may also be made in passing to an in-

teresting article by Judge Giles 8. Rich entitled

“Principles of Patentability’’, 28 Geo. Wash. L. Rev.

393-407 (1960), especially pp. 399-400.

Since so far as we can discover in the prior decisions

of this Court there is no direct authority on the broad

issue presented by this case, it follows that in in-

12

terpreting the intent of the framers of the Constitu-

tion and of the first and succeeding patent statutes this

Court is free to decide the question in accordance with

the broadest possible public policy.

The Government’s petition takes the position that

‘‘Tt]he development of a process for making a use-

less product adds nothing to the sum of useful knowl-

edge.’’ This seemingly presupposes some justification

for thinking that the founding fathers of our country

intended to place the acquisition of useful knowledge,

i.e., useful scientifically, beyond the pale of the useful

arts. But the question may be asked, why should

‘‘useful”’ in this context exclude that which increases

our knowledge of science* and include only that from

which one may possibly realize some financial return

some time in the near future? Such a narrow and

forced construction of the term ‘‘useful’’ seems hardly

consonant with the tremendous sums expended by the

Federal government** nowadays to foster research and

discovery, both pure and applied.

* As a matter of fact, even reports of negative results (e.g., of

activity in the steriod field) are important. A new compound in-

tended to be immediately screened with the idea of ‘‘blocking’’

blind leads as rapidly as possible so as to enable researchers to pro-

ceed with other and more fruitful leads is useful. Therefore, an

economical and feasible method for the production of compounds

for research purposes is assuredly a ‘‘useful art’’.

** In the lead article of a recent (July, 1965) issue of Scientific

American, entitled ‘‘The Support of Science in the U.S.’’, pages

19 et seq., by Dael Wolfle, shown on page 16 to be executive officer

of the American Association for the Advancement of Science and

publisher of the association’s official magazine Science, we find

the following significant passages :

‘‘This year in the U. S. nearly $21 billion—3.2 percent of the

gross national product—will be spent for research and develop-

13

Moreover, considering the question on a historical

basis, can anyone familiar with the life and works of

Benjamin Franklin,* the elder statesman of the Con-

stitutional Convention, that amazing inventive genius

and pioneer scientist of our Colonial period who, like

ment, Some two-thirds of the funds will be supplied by the

Federal Government.’’ [p. 19]

‘(Meanwhile the economy of the country has gained enor-

mously from the upsurge in technological research and de-

velopment. In 1953 research and development accounted for

11 percent of all industrial investment; in 1962 research and

development absorbed about 25 percent.’’ [p. 20]

‘‘In the 12 years from 1953 to 1965 every major source of

research and development funds increased its support sub-

stantially. Federal funds are five times what they were in

1953. Industrial support has tripled, and the universities

have done almost as well. The other nonprofit institutions

are contributing six times their 1953 amount.’’ [p. 21]

In a book review in Science for 25 June 1965, at p. 1707, we find

a [Swedish] sociologist beginning his review by stating as follows:

“The Soviet Union openly and repeatedly proclaims that its

goal is to become the world leader in all key branches of

basic and applied research. China has the same goal. Each

of them aims to displace the United States from what one

Congressman recently called its ‘unquestioned world leader-

ship’ in scientific and technological research. Both the Soviet

Union and China are cheering themselves on in this research

race with the Marxist dictum that the capitalist nature of

society in the United States will throttle the growth of its

science and technology.”’

*‘‘His [Franklin’s] faith in scientific progress never wavered.

When confronted with skepticism about the utility of the lighter-

than-air balloon flown in Paris in 1783, he replied ‘Of what use

is a new-born babe?’ ’’? Quoted from Ralph L. Ketcham, ‘‘ Ben-

jamin Franklin’’, page 110 (The Great American Thinkers Series,

Washington Square Press, 1965). And see Edwin Hubble, ‘‘The

Nature of Science’, Huntingdon Library, 1954, page 27, where a

similar allusion is given, together with Faraday’s famous reply

to a broadly similar question: ‘‘Some day you may be able to

tax it.’’

14

the fabled Prometheus of old, called down the very

lightnings from the heavens—that thinker who de-

voted much of a long and fruitful lifetime to what we

today would call scientific research; can anyone seri-

ously believe that such a man would countenance for

one moment any interpretation of the patent statutes

that would tend in the slightest way to discourage man

in his ceaseless search for knowledge that will enable

him to push back the frontiers between him and the

still undiscovered mysteries of nature?

The petition for the writ suggests that the problem

is of especial importance in the drug industry. It is

said that one who has invented nothing useful should

not be put in the position to discourage, if not con-

trol,* segments of important areas of medical or phar-

maceutical research. This ignores the basic facts of

industrial life. Patents, whether valid or invalid, do

not discourage research-—indeed, by their very nature

they cannot! By their disclosures they effectively

promote research. In view of the tremendous mush-

rooming of research in recent decades, especially in

the very field emphasized in the petition, only a Rip

van Winkle could suppose that the issuance of patents

had done anything to restrain the tempo of such re-

search.** The issuance of a patent for process A for

the production of a given compound acts through its

potential restraint as a deciding incentive to competi-

* The petitioner does not enlighten us as to how the owner of

a patent on something that is not useful could possibly discourage

any area of research, let alone control it! Besides, that is not the

question here in any event for a patent already exists on the

process—the only question is whether the invention was first made

by respondent rather than by Ringold and Rosenkranz (R. 57).

** Cf. the statistics given by Dael Wolfe, supra.

15

tors of the patent owner to engage in independent

research to develop rival or equivalent processes B,

C, D, ete. to achieve the same or similar—and some-

times even superior—results, with the consequent

overall enrichment of the sum total of man’s knowl-

edge of nature—and incidentally increasing competi-

tion and decreasing the possibility of ‘‘monopoly’’.

We thus see that the Government’s fear is really only

a figment of the imagination. The supposed ‘‘injury

to the public welfare” (petition, page 11) never ma-

terializes; the net result is quite the contrary.

At this point it would not be amiss to mention the

admonition by this Court in Mazer v. Stein, 347 U.S.

201 (1954) :

‘“‘The economic philosophy behind the clause

empowering Congress to grant patents and copy-

rights is the conviction that encouragement of

individual effort by personal gain is the best way

to advance public welfare through the talents of

authors and inventors in ‘Science and useful

Arts’. Sacrificial days devoted to such creative

activities deserve rewards commensurate with the

services rendered.’’ [p. 219]

The petition points out (bottom of page 10) that

“(f]requently processes for producing complex com-

pounds are developed even though the compound has

no known use’’. This would certainly seem to be a

very good thing. Such practice thereby makes avail-

able to other chemical researchers an even wider array

of compounds available for screening and testing for

new uses not remotely envisaged by the chemist who

developed the initial process in question. It, in effect,

provides still another ‘‘tool’”’ that might prove useful

16

to (say) a clinician groping about to find a remedy

for one of the diseases that afflict mankind. It is of

course axiomatic that a clinician cannot try out a com-

pound that is not available to him.

The petition states (top of page 11) that ‘‘[s]ubse-

quent experimentation may show that the compound is

a very valuable drug.’’ All well and good. In that

case, the subsequent experimenter would have it within

his power to apply for and possibly obtain a patent

covering his later-discovered process for the thera-

peutic use or for the novel therapeutic composition

containing it. But this would be a second and inde-

pendent invention.

Since the Government’s petition particularly em-

phasized the importance of the problem involved in

this case ‘‘in the drug industry’’ (petition, page 10),

it is suggested that an address of several years ago

entitled ‘‘Patents and the Conquest of Disease’’, by

John T. Connor, then President of Merck & Co., Inc. -

and now Secretary of Commerce, is of transcendent

importance and may prove to be of interest to the

Court. This is regarded as of sufficient imterest to

justify incorporating it as Appendix D to this brief

for the possibly greater convenience of the Court,

since extracting excerpts from it would not impart its

true flavor or do it full justice. For like reasons, we

have incorporated as Appendix E a recent statement

by Walter A. Munns, President of Smith Kline &

French Laboratories, before the Senate Subcommittee

on Patents, Trademarks, and Copyrights.

Many years ago, while on circuit, Justice Story

said that ‘‘[t]he doctrine of patents may truly be said

GE METOLIUS RR FS ARINC | gt —

17

to constitute the metaphysics* of the law.” Barrett

ot al. V. Hall et al., Fed. Case No. 1047 (C.C. Mass.,

1818). Metaphysics or not, there is no need or excuse

for so construing the patent law—at least in the ab-

sence of a clearly expressed Congressional intent to

the contrary—in such fashion as to remove the incen-

tive to develop and promptly disclose new processes

for producing products, without necessarily waiting

for the products to be tested.**

What stranger contrast in attitudes could we have

than, on the one hand, the expenditures of tremendous

sums of money by certain departments of the Federal

Government to enable us to be the first to achieve the

technical feat of placing a man on the moon, and on

the other hand, the efforts of the Government in

espousing an interpretation as strict as possible on

the otherwise broad term ‘‘useful’’ in the Constitution

and the patent statutes so as necessarily to discourage

rather than encourage the expenditure of time and

money on scientific and industrial research and de-

velopment ? ‘

* And to the same effect more recently, see Dr. Nathan Reingold,

Science Bibliographer in the Science and Technology Division of

the Library of Congress, in Technology aud Culture, Vol. I, No. 2,

page 166 (Spring, 1960).

** Note here the incentive for prompt disclosure to the publie.

Why should the inventor of the process be required to make a

second invention (some particular use for the product of the

process) before being regarded as entitled to secure a patent on

his first invention? This would only lead to move delay in dis-

closing the invention to the public, which per se is undesirable.

After all, one must not lose sight of the fact that the inherent

nature of a process is that it produces a product. This is the

only possible utility that any process can have. A process is there-

fore in and of itself necessarily useful ‘within the meaning of 35

U.S. C. § 101.

18

What the Patent Office has for some time been at-

tempting to do, and is‘still doing,* as should be clear

from a comparison of the Government’s position here

with the prior case law reviewed in Appendices B and

C, is to change the law on utility with respect to pat-

ents on process inventions. There is no clear or valid

reason for such a change in policy, and the Court of

Customs and Patent Appeals very properly refused

to sanction it.

THE QUESTION OF UTILITY AS PRESENTED IN PETI-

TIONER’S BRIEF AS DISTINGUISHED FROM THE

PETITION

In the Government’s petition a ‘‘useless product’’

is referred to in the question presented (p. 2). In

the Government’s brief, however, the product is re-

ferred to in the question presented (p. 2) as ‘‘a prod-

uct without any known specific utility’. As pointed

out earlier in this brief, there is a wide difference in

scope between these two questions, thereby fully justi-

fying this Court in concluding that the writ was im-

providently granted.

Apart from that, however, this amicus respectfully

submits that the record wholly fails to support the

Government’s contention that the product of the

process was ‘‘without any kuown specific utility’’.

The Government’s brief admits (p. 5) that the No-

vember 1956 publication by Ringold and Rosenkranz

*In Ex parte Joly et al., Appeal No. 7472, argued before the

Court of Customs and Patent Appeals on October 8, 1965, the

Patent Office Board of Appeals expressly refused to follow the

decisions of the Court of Customs and Patent Appeals, its statutory

appellate court (cf. 28 U.S.C. § 1542 and 35 U.S.C. §§ 141-4), on

the issue of process claim utility, and on that point is making

essentially the same contentions as it is making in the present case.

—_—

—

19

(R. 59-61) indicates a use for the small class of 2-

methyl-dihydrotesterones. The 2a, 17a-dimethyl de-

rivative of the respondent’s rejected process claim 2

(R. 62) is a member of that small class. In rejected

process claim 3 the 17-substituent is “lower alkyl”’

which of course includes the one-carbon-atom methyl

group (R. 5, last paragraph). The 2a,17a-dimethyl-

androstan-17f-ol-3-one of rejected claim 2 (R. 62) is

shown structurally at R. 60, right column, second struc-

tural formula, when the IIb substitutions are made, i.e.,

Me (mcthyl) for R, and H (hydrogen) for R’. See

R. 60, left column, last compound specifically named

in the first full paragraph. At R. 61, left column,

first full paragraph, Ringold and Rosenkranz suggest

a definite use as a part of the published prior art avail-

able not only over 3 years before respondent filed (R.

3) but even more than 12 months before Ringold and

Rosenkranz filed (R. 57). Respondent is fully en-

titled to rely upon that prior art indication of use as

a tumor inhibitor (to paraphrase slightly the peti-

tioner’s brief at page 5) in view of this Court’s hold-

ing in Carnegie Steel Co. v. Cambria Iron Co., supra.

The fact that the Ringold and Rosenkranz article

suggests (R. 61) that the program of screening for

anti-tumor effectiveness was still in progress at the

time of publication of the article is immaterial. Any

objection to that, if objection there be, was very fully

answered by this Court long ago in The Telephone

Cases, 126 U.S. 1 at 535-7 (1888).

20

“THE SINGLE LEGAL ISSUE” REFERRED TO IN THE

. MAJORITY OPINION OF THE C.C.P.A.

That issue (R. 63) is a very specific one obviously

quite different from either of the two ‘‘questions pre-

sented’? by the Government in its petition and brief

respectively. Probably little should be said here con-

cerning it, in view of the present posture of the case.

Suffice it to say that the real issue is not whether

a patent should be granted on the process in question

—one has already been granted to Ringold and Rosen-

kranz—but is whether Ringold and Rosenkranz are

or respondent Manson is entitled to be recognized as

the first inventor(s). But the patent statute entrusts

the determination of that issue (priority of invention)

to a different tribunal in the Patent Office, namely, the

Board of Patent Interferences (35 U.S.C. §135).

Here, the proceedings were ex parte before the Pri-

mary Examiner and the Board of Appeals (35 U.S.C.

§ 134). As is well recognized (cf. In re Nelson et al.,

280 F. 2d 172, 187 (1960)), different policy consider-

ations may be involved in ex parte and inter partes

cases. In the former a pure question of patentability

under the statute is involved; in the latter it is the

question of which of two rival inventors has the para-

mount right to a patent on an invention that has al-

ready been determined by the Patent Office to be a

patentable one. All that respondent is required to do

ex parte to qualify for the requested interference is to

establish prima facie his right to an award of priority,

under Patent Office Rule 204(b) reproduced at p. 4 of

petitioner’s brief. This he has done by means of the

five affidavits submitted under that rule (R. 9, R. 10-

18, R. 33, R. 46 and R. 47-48). The interference should

21

be declared with the Board of Patent Interferences

then determining the issue of priority of invention in

the customary manner. See In re Dickinson et al., 299

F. 2d 954 (1962).

COMMENTS ON VARIOUS MISCELLANEOUS POINTS

MENTIONED IN THE GOVERNMENT'S BRIEF

P. 18, lines 2-4—A use was in fact shown in the No-

vember 1956 Ringold and Rosenkranz article. Apart

from that fact, admitted en page 5 of the Government’s

brief, the footnote reference to Petrocarbon Ltd. v.

Watson, 247 F. 2d 800 (1957), at that point in the

brief suggests at least one possible source of confusion.

It is well recognized that the requirements as to suffi-

ciency of disclosure under 35 U.S.C. § 101 and under

35 U.S.C. § 112 are by no means necessarily the same.

In re Folkers et al., 344 F. 2d 970 (May 6, 1965). In

re Krazinski et al., 347 F. 2d 656 (June 24, 1965). In

re Isaacs et al., 347 F. 2d 887 (July 1, 1965). The

present case was decided in the court below by refer-

ence to 35 U.S.C. § 101 (R. 64-67), the majority opinion

carefully distinguishing a 35 U.S.C. § 112 situation.

(R. 68). Petrocarbon, on the other hand, shows on

its face that it was decided on the basis of 35 U.S.C.

§ 112. Long ago this Court pointed out that a judicial

opinion cannot be relied upon as a binding authority

unless the case was such as to call for its expression.

Carroll v. The Lessee of Carroll et al., 16 How. (57

U.S.) 275 at 287 (1853).

P. 19, lines 14-19—these passages are inconsistent

with the admission made by the petitioner at p. 5 of

its brief, as well as contrary to what is actually taught

in the November 1956 Ringold article.

en

. ze .

P. 20, footnote 15—the apparently unfounded ampli-

fication of the definition of ‘‘science’’ at this point

vis-a-vis copyrights— a few lines thereafter being dis-

tinquished from ‘‘useful arts’’ vis-a-vis patents but

here modified to mean ‘‘knowledge in general’’—seems

wholly inconsistent with the Government’s quotation

from the Great Atlantic & Pacific Tea case about the

middle of page 24 of the brief.

Pp. 20-21 footnote 16—it could hardly be seriously

suggested by the Government that even as of 1785, an

instrument for fixing latitudes would lack the neces-

sary utility to satisfy present-day 35 U.S.C. § 101. Not

even a landlubber would be likely to hold such a view—

especially if at the time he happened to be lost in the

vast reaches of (say) the South Atlantic Ocean with-

out instruments for navigation. The problem of fix-

ing latitudes, and the (historically) still more difficult

problem of determining longitudes, has always been of

the most intensely practical kind. In ‘‘Royal Society,

Its Origins and Founders’’, Sir Harold Hartley, Edi-

tor, 1960, the work of the 17th-century scientist,

Laurence Rooke, on the problem of determining longi-

tude at sea, is referred to at p. 116 as ‘‘of course, of

vital economic importance’’. The problem was not

satisfactorily solved until the work of John Harrison

shortly after the middle of the 18th century—see

Samuel Smiles, ‘‘Men of Invention and Industry”’,

1855, pp. 72-104, where Harrison is said to have ‘‘con-

ferred an incalculable benefit on science and naviga-

tion, and established his claim to be regarded as one

of the greatest benefactors of mankind.’’ Smiles

refers to problems involved in both latitude (pp. 83-

84) and longitude determination. See also T. K. Derry

& T. I. Williams, ‘‘A Short History of Technology”’,

—

23

Oxford University Press, 1961, pages 295, 206, 210,

911. In Beckmann’s ‘‘History of Inventions”’, Fourth

(1846) Edition, Vol. I, page 371, we are told that not

many years after Philip III of Spain offered a tre-

mendous sum as a reward to anyone who should dis-

cover the means of finding the longitude of a ship at

sea, Morin about 1630 is reported to have said to the

Cardinal Richelieu, ‘‘Id vero an ipsi daemoni nescio,

homini autem suscipere scio esse stultissimum”’ (‘‘I

know not what such an undertaking would be even to

the devil himself, but to man it would, undoubtedly,

be the height of folly.’’).*

Of course, whether Michael Byrne’s ‘‘new invented

Instrument’? was operative for its intended purpose

would be quite another matter; one having nothing to

do with whether its utility had been sufficiently indi-

cated by its inventor, and therefore nothing to do

with the present case.

As a practical matter, there is no harm in granting

patents on truly useless inventions in the commercial

sense. One of the beauties of the patent system is

the automatic adjustment of the value of the patent

monopoly to the value of the contribution. Just as

one does not expect all books or plays given copyright

protection to be edifying or best sellers or for all

“music” protected by copyright to be either aesthet-

ically pleasing or ‘‘hits’’, so may one not reasonably

expect every invention to supersede all other like in-

ventions. It is enough if it is not frivolous, immoral

or mischievous, which is the old reliable test suggested

by Justice Story.

* One wonders whether official attitudes toward innovation have

changed much in three hundred years.

24

It is not each individual invention that must be

capable of promoting progress in an art to be patent-

able—any more than in copyright—but the true mean-

ing of the Constitution is that the patent system is to

be so devised by Congress as to carry out the intent

of promoting the useful arts. This Congress has done,

changing the system from time to time and, on the

basis of some 175 years experience, has now ttself

stated expressly all of the prerequisites to patent-

ability. ‘‘Useful’? was continued in the law in the

light of the Justice Story interpretation. It should

not at this late date be changed so as supposedly to

conform to what some theorists might feel should be

the law.

P. 28, Vines 9-14—as has been shown above, there is

no basis in the record of this case for the reference to

‘‘presently useless processes’. The process is useful

for the only purpose to which any process can ever

be put, namely, the production of a product. More-

over, the Government has not explained how a patent

on a presently useless process, if such there be, can

stifle progress. If there is indeed a useless process,

who would use it?

P. 29, lines 1-2—Ringold’s disclosures are both prior,

not subsequent, to the filing date of respondent’s ap-

plication. What precise time relationship they bear

to respondent’s actual process can only be adequately

determined during an interference proceeding under

35 U.S.C. § 135.

P. 29, last three lines—the product does have suffi-

cient utility to warrant a patent on the process. Rin-

gold and Rosenkranz already have the patent (R. 57).

_

_ —/

25

P. 30, lines 16-21—how can the Patent Office or the

courts realistically determine ‘‘the potential harmful

economic consequences” here referred to? See the

addresses by John T. Connor, President of Merck &

Co. and now Secretary of Commerce, and Walter A.

Munns, President of Smith Kline & French Labora-

tories, set forth hereinafter in Appendices D and E.

The Government’s approach seems to be tantamount

to saying that only good books, pleasant music, aes-

thetically pleasing pictures, and edifying uplifting

speeches and sermons shall be subject to copyright.

Justice Holmes, speaking for this Court, laid that

notion to rest over 60 years ago in Bleistein v. Donald-

son Lithographing Company, 188 U.S. 239, 251 (1903).

It would seem to be much safer in the case of patents

to adopt the time-tested approach of Justice Story

that whether the invention

‘‘be more or less useful is a circumstance very

material to the interests of the patentee, but of

no importance to the public. If it be not exten-

sively useful, it will silently sink into contempt

and disregard.’’ Lowell v. Lewis, Fed. Cas. No.

8568 (C.C.D. Mass., 1817)

P. 31, lines 7-11—the Government has not shown

how a patent on a new process could possibly operate

to ‘‘close the door to experimentation or innovation’”’

by others with the product. The argument earlier in

this brief has shown quite the contrary.

P. 31, lines 17-18—these two lines completely mis-

conceive the effect and operation of a process patent.

Such a patent, on the contrary, would serve to stimu-

late competitors to try to find a different route to the

26

product. As a practical matter, however, a patent

owner having the predatory instincts seemingly sug-

gested in the Government’s petition and brief would

hardly be likely to waste his time trying to foreclose

his competitors from practicing a process leading

to the production of a ‘‘useless’’ product.

P. 31, lines 19-25—there seems to be no basis in the

record for this assertion. It can hardly be said that

respondent is a ‘‘preferred”’ inventor, to date at least.

Even if respondent wins the present appeal, he still

must surmount the hurdle of the interference priority

contest that would then ensue.

P. 32, line 10—the reference to ‘‘useless patents’’

seems unwarranted in view of the fact that Ringold

and Rosenkranz already have a patent on the process

in question.

P. 32, last five lines—the fallacy of the argument as

regards foreclosing research and innovation by others

in this area has already been demonstrated. The ref-

erence to Ringold as the ‘‘first inventor’’ seems un-

warranted, since that is the very thing yet to be estab-

lished—the very purpose of the attempt by respondent

to provoke an interference. The Government there-

fore assumes that which has yet to be proven.

P. 33, lines 3-5—it is the unduly restrictive view of

the function of the patent system that will the more

surely stifle scientific development, innovation and

competition. Encouragement, not stifling, is what is

wanted. This strictly patent case ought not to be con-

fused with some kind of proceeding under the anti-

trust laws.

P. 34, lines 5-9—the basis in the record for this

statement is not apparent. All respondent has to do

ea gan ane i et aaa tae

27

is make out a prima facie showing of invention prior

to the effective date of the Ringold and Rosenkranz

patent. To that end, and especially so far as provok-

ing the desired interference is concerned, respondent

is fully entitled to rely upon a prior art publication

to establish that the utility of the product of the

process was already known to those skilled in the art.

That the prior art publication in question happened

also to be that of Ringold and Rosenkranz is interest-

ing but immaterial as a matter of law.

CONCLUSION

The writ of certiorari should be dismissed as im-

providently granted. On the merits, the judgment of

the Court of Customs and Patent Appeals was emi-

nently correct and should be affirmed.

Respectfully submitted,

AMERICAN PATENT LAw ASSOCIATION

802 National Press Building

Washington, D. C. 20004

Hersert P. Kenway, President

W. Brown Morton, JR.,

Past-Preésident

ELtswortH H. MosHer

300 Munsey Building

Washington, D.C. 20004

Chairman, Committee on

Chemical Practice

Washington, D. C.

October, 1965