silent. They included in their application an explicit statement that their compounds were for use in making specific steroids having certain structures, related to the structures of their own compounds, which they disclosed. They told what procedures could be used in using their compounds. Not only did they "indicate" a use, they explained it in detail and told how to carry it out in practice.

What has beclouded the issue in the present case is the nature of appellants' use, which the Patent Office erroneously regarded as not meeting the statutory requirements on "utility." With that issue out of the way, it is clear that they taught how to use their new compounds.

[16] In holding, as we do, that appellants complied with section 112 in making a clear disclosure of use in steroid research, we do not mean to imply that applicants for patents on new compounds can now rest on an assumption that they are useful as intermediates and obtain patents without even suggesting what use may be made of them or how that use may be effected. We are not holding that all compounds are inherently useful as "intermediates." We have reason to believe some are not, and it is a question of fact to be determined in each case. Assuming, however, that a given compound would be so useful, it would still be incumbent on the applicant to disclose what is to be made from it and how it would be done. What the Bremner rule requires is that an application shall make known to those skilled in the art something that can be done with a new compound and not, through silence, leave the matter entirely to speculation or independent investigation.

The Petrocarbon Case

The Patent Office urges upon us as an authoritative precedent the case of Petrocarbon Limited v. Watson, Com'r., 247 F. 2d 800, 114 USPQ 94, decided July 3, 1957, by the Court of Appeals, District of Columbia. The decision was by a divided court, Judge Burger dissenting with an opinion.

[17] While we recognize the special competence of that court to deal with questions of patent law and accord substantial weight to its views as an appellate court of equal standing, we regretfully find ourselves in complete disagreement with the majority view on the question of patent law involved. While it is entitled to deference, it is not authoritatively binding on us. See Watson, Com'r. v. Allen, 254 F. 2d. 324; 117 USPQ 68. Since it involves a question of law on which that court as well as ours is frequently required to pass, we set forth with particularity our reasons for disagreement.

The Petrocarbon case, like the present case, involved the question whether a specification was fatally defective for failure to comply with section 112. The specification described new polymers, asserted to be useful, which deposited from vapors on cool surfaces in the form of a "film." The film was described as having great thermal stability up to 270° C., was said not to be attacked by sulfuric acid at 150° C., and to be insoluble in, and not to swell visibly in, boiling solvents. Seven solvents of various types were named. The case turned on the meaning of the term "film" which was said to be well understood by those skilled in the art, though the court chose to find great ambiguity in it. The majority of the Court of Appeals sustained the District Court's refusal to receive expert testimony and exhibits to show what "film" actually meant to those skilled in the art. This evidence, it seems to us, would have assisted the court in determining the fundamental issue of what the disclosure actually was. We agree with Judge Burger's dissent on the ground that the evidence should have been received. Even without it, however, our own reading of the specification leads us to the conclusion that anyone skilled in the plastics art, knowing all of the chemical and physical properties given for the film, would know of many possible uses for the polymers and how to use them. The case differs from the Bremner case in the amount of information given about the new polymers which, in the Petrocarbon case, was sufficient to enable those skilled in the art to use the new materials and hence section 112 was complied with.

For the reasons above stated, we must respectfully decline to accept the Petrocarbon case as a precedent.

The Patent Office also relies on In re Perrigo, supra, one of the few cases in this court on the subject of utility. The passage cited says,

Neither the Patent Office tribunals nor the courts may properly grant patents upon a mere possibility that a device might do the things claimed for it and be useful.

That statement has no applicability to the facts at bar because it was made in the context of an alleged invention, the description of which the court characterized as "not comprehensible," either to it or to the tribunals of the Patent Office. The court had before it a device which was clearly incapable of being used for anything and was dealing with the rejection that it was "lacking in utility as a result of inoperativeness." [Emphasis ours.] The above quotation continues,

Neither the Constitution nor the statutes contemplate the granting of patents upon theories, nor giving a monopoly upon intellectual speculations embodied in devices incapable of scientific analysis.

We are entirely in accord with that statement, but a specification fully describing how to make a group of new chemical compounds of a class

containing highly useful members, what their structure is, what type of compounds they can be used to make, and how to go about doing so is far outside anything under consideration in the Perrigo case.

Reduction to Practice Cases

The Patent Office petition for rehearing asserted that our decision herein was inconsistent with a number of prior decisions in inter partes cases as to the proof of utility required to establish an actual reduction to practice. The cited cases in this court are: Muskat et al. v. Schmelkes, 31 CCPA 837, 140 F. 2d 984, 60 USPQ 520; Saklatwalla v. Marburg, 36 CCPA 791, 172 F. 2d 227, 80 USPQ 439; Kvalnes v. Wright, 37 CCPA 1147, 183 F. 2d 193, 86 USPQ 403; Morway et al. v. Bondi, 40 CCPA 917, 203 F. 2d 742, 97 USPQ 318; Reiners v. Mehltretter, 43 CCPA 1019, 236 F.2d 418, 111 USPQ 97 Blicke v. Treves, 44 CCPA 753, 241 F. 2d 718, 112 USPQ 472. Also cited were decisions of the Court of Appeals, D.C., in Knutson et al. V. Gallsworthy et al., 164 F. 2d 497, 74 USPQ 324; and Larsen v. Marzall, 195 F.2d 200, 92 USPQ 306. We have carefully considered these cases and also Archer v. Papa, 46 CCPA 835, 265 F. 2d 954, 121 USPQ 413; Kyrides v. Bruson, 26 CCPA 986, 102 F. 2d 416, 41 USPQ 107; and Larson et al. v. Eicher, 18 CCPA 1497, 49 F. 2d 1029, 9 USPQ 461, which were not cited but which are as pertinent, though less favorable to the Patent Office position.

[18] We see no conflict or inconsistency as between our present decision and the decisions in those inter partes cases. All we are concerned with here is whether an application contains sufficient disclosure to comply with the law. In every interference it has already been determined, before the interference is declared, that the application of each party is in compliance with law. Insofar as this decision has an effect on the requirements of application disclosure, it will appply equally in inter partes and ex parte cases, as does all of the law on the subject; an application sufficient for one purpose is sufficient for all purposes, including the establishment of a constructive reduction to practice. It would not be proper in this ex parte case to make any pronouncement as to what is required by way of test to establish an actual reduction to practice in an inter partes case but it can be stated that so far as utility is concerned, there is but one standard to be applied, regardless of where or how the issue is raised. As to tests to establish utility, which may mean operativeness or suitability for an asserted use, an examination of the above cited cases will show that the requirements may vary all the way from no test at all to testing under actual service conditions. See Morway et al. v. Bondi, supra. Inter partes priority disputes involve policy considerations with which we are not concerned

RE

in an ex parte case and we cannot prejudge what will be required in future situations. All we say now is that the application before us adequately complies with the law.

The Patent Office point predicated on the above inter partes cases and strongly argued in the petition for rehearing appears to have been abandoned by failure to mention it in the solicitor's rehearing brief. We have dealt with it, however, to make clear the fact that we have not overlooked it.

New Matter

One final point remains for disposal. During prosecution, in an effort to answer the examiner's contention that the specification contained an inadequate disclosure of utility, appellants attempted to add a paragraph about which they stated in their "Remarks,"

In the amendment filed December 10, 1952, it was pointed out how by known methods applicants' compounds may be converted to known useful compounds shown in the Ruzicka et al patent. These well-known and obvious steps have been incorporated in the specification.

The examiner rejected the amendment as new matter only as to its last sentence but the board held the entire paragraph to be new matter.

[19] Of course, if the application had been fatally defective, as alleged by the examiner, such a defect could not have been cured by an amendment the object of which was to put into the specification something required to be there when it was filed. The new matter rejection by the board on that theory was sound. However, we are reversing the finding that the specification was fatally defective.

We have considered the paragraph sought to be entered to augment the original disclosure of utility. It seems to us that it clearly goes beyond what is permitted by 35 U.S.C. 132 and Patent Office Rule 118 which provides that "an addition to the original disclosure, cannot be added to the specification." The amendment appears to us to be an addition to the disclosure and the refusal to admit it will, therefore, be affirmed.

For the above-stated reasons, the decision of the board is reversed as to the rejection of claims but affirmed as to the admission of the amendment objected to as new matter.

MARTIN, Judge, concurring in part.

With but a single exception I am in complete accord with the extremely well considered majority opinion. My sole disagreement lies with the application of the section 112 requirement, as construed by the majority, to the facts of the Bremner case.

Although it is not clear from the face of this court's opinion in the Bremner case, the ground of rejection there appealed from was ap

pellants' alleged failure to comply with R. S. 4888,1 the predecessor to section 112. R.S. 4888 read:

Before any inventor or discoverer shall receive a patent for his invention or discovery he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; [Emphasis

added.]

In construing the requirements of R.S. 4888, with respect to how much must be said about the uses of chemical compounds in a specification wherein they are claimed, this court in the Bremmer case stated that there must be "an indication of the use or uses intended." This interpretation has been carried forward by the majority as its view of the section 112 requirement, while making clear the fact that no specific mode of communicating that information is requisite as long as the specification as filed contains it.

The Bremner specification, in my opinion, completely satisfies the applicable statutory standard in that the disclosure gives one skilled in the art "an indication of the use or uses intended" by Bremner and his co-applicants. As filed, it stated:

The [dihydropyran] polymers vary from viscous liquids to hard brittle solids, according to the operating conditions, such as the temperature of polymerization, polymerization catalyst and duration of polymerization. In general the longer the period of polymerization, the higher the melting point of the polymer. As a further feature of the present invention we have found that polymers of higher molecular weight, as indicated by higher melting point, can be obtained if the polymers, produced as hereinbefore described, are heated at temperatures above 100° C., preferably between 100° C. and 200° C., in the presence of the Friedel-Crafts type catalysts hereinbefore defined.

The quantity of catalyst present during the heating step may vary within wide limits, but it is desirable to use a quantity of catalyst smaller than that used during the polymerization step, for example a quantity about one tenth of that used in the polymerization step has been found suitable. It is desirable therefore, at the conclusion of the polymerization step to remove or destroy the catalyst present, for example by washing the polymer with boiling water, or by adding ammonia to the polymer, and subsequently to add catalyst, which may be different from that used in the initial polymerization step, in a quantity less than that used in the said polymerization step.

With respect to the products formed as a result of the processes outlined in the examples, the disclosure reads:

1 The Examiner's Statement in the Bremner appeal asserted that "The present specification fails to meet the requirements of either Section 4888 R.S. or Rule 35 of the Rules of Practice because nowhere in the specification is there a statement of what the products can be used for." The board summarized the examiner's position thusly, "From the description, the Examiner concludes that no practical use of the compounds is disclosed, as required by Sec. 4888, Rev. Stats., and Rule 35 (Rules of Practice)." [Emphasis added.]