trademark 'deadwood.'" Nowhere in its opinion, however, can I find any reason for deciding that "Ni-Tensyl" is deadwood. That fact, which decides the case, seems to have been assumed from the beginning. True, the majority says "Ni-Tensyliron" differs from "Ni-Tensyl” in sound, appearance, spelling and meaning, but this does not show "Ni-Tensyl" to be either out of use or dead. The majority is also afraid that a decision holding that "Ni-Tensyl” is "still in use" when incorporated in "Ni-Tensyliron" would so stretch section 8 as to defeat the purpose of section 8. This fear is without foundation and is not a very adequate reason for burying "Ni-Tensyl" alive.

SMITH, J. (dissenting):

The majority opinion seems to me to place an undue emphasis on the strictly legal aspects of the issue before us. It is my opinion that all we are required to do under the express language of section 8 of the Lanham Act is to decide a simple fact issue: Is the mark "Ni-Tensyl” still in use?

In arriving at its decision, the majority opinion attaches more significance than I do to the name used on the label specimens showing the mark and does not give as much legal effect as I would to the sworn allegations of use in the affidavit filed by appellant.

It is significant to me that the affidavit of use, after referring to the registration of the mark “Ni-Tensyl” states:

that the mark shown in the aforesaid registration has been continuously used by said corporation and related companies of said corporation, in interstate and/or foreign commerce, on goods and/or in advertising, for five consecutive years, from July 2, 1951 to the present, in connection with the following goods recited in the registration: nickel-containing iron castings * *

The labels referred to in its affidavit show the mark "Ni-Tensyl" to be still "in use," as that term is used in section 8. I do not regard the addition of the descriptive word "iron" on the labels as evidence which justifies cancellation of registration for non-use of the mark "Ni-Tensyl" under section 8 (b) of the Lanham Act.

It is unfortunate that the affidavit filed on behalf of appellant was not more explicit as to the facts contemplated by Rule 2.162(3), and upon which the positive averments of use were made. It is seen particularly in the failure of the affidavit to recite such pertinent facts as may have a bearing on the question of non-use of the registered mark. It seems clear to me from the affidavit that appellant considers its use of "Ni-Tensyliron" to constitute a use of its mark "Ni-Tensyl."

However, in view of the opposite factual conclusion reached by the Patent Office and by the majority, from their reading of the same affidavit, prudence suggests that in every case where the specimens

of a mark deviates in any manner whatsoever from the mark as registered the section 8 affidavit required by Rule 2.161 should be most explicit in its recital of the facts of use. Rule 2.162 (3) enumerates the facts required to show that the mark as described in the registration is still in use and to show that in using the changed specimens there is no intent to abandon the mark.

For these reasons, I am unable to agree with the conclusion reached by the majority and respectfully dissent from the same. I would find as a factual matter the mark "Ni-Tensyl" is still in use for the reasons more fully set forth in the dissenting opinion of Judge RICH. I would therefore reverse the decision below.

[U.S. Court of Customs and Patent Appeals]

IN RE ARNOLD N. JOHNSON

No. 6579. Decided July 20, 1960 Petition for Rehearing denied Oct. 10, 1960

760 O.G. 1041; 282 F. 2d 370; 127 USPQ 216

1. PATENTABILITY-REFERENCE-STATUTORY

BAR UNDER 35 U.S.C. 102(B)—

RIGHT TO FILING DATE UNDER 35 U.S.C. 120. "The reference discloses the claimed dimer of hexachlorocyclopentadiene and, since it was published more than one year prior to the filing date of the instant application, it is a statutory bar under 35 U.S.C. 102(b) unless appellant is entitled under 35 U.S.C. 120 to rely upon the filing date of his earlier application No. 757,321, filed June 26, 1947 on which Patent No. 2,724,730 was granted November 22, 1956. The earlier application was copending with the appealed applications and was filed less than a year after the date of the reference."

2. SAME-UTILITY-UTILITY REQUIREMENT OF 35 U.S.C. 101.

On reference to a paragraph reading, "The products of the aforesaid process are valuable as chemical intermediates for organic synthesis, for solvent uses and for the preparation of toxic substances such as insecticides, fungicides, etc.," Held that appellant's earlier application contains a sufficient statement of the utility of the product claimed in his appealed application, that "Solvents, intermediates, insecticides, and fungicides are products having utility," and that "This meets the utility requirement of 35 U.S.C. 101." 3. SAME-SAME-UTILITY REQUIREMENT OF 35 U.S.C. 112.

On the question whether the description of the manner and process of using the compound claimed by appellant, for the purposes of solvents, intermediates, insecticides and fungicides, as set forth in appellant's earlier application, is sufficient to meet the requirements of the first paragraph of 35 U.S.C. 112, Held that the test for sufficiency of compliance with section 112 is what the application as a whole communicates to one skilled in the art; that "it is well settled that an applicant need not expressly set forth in his specification matters which are commonly understood by persons skilled in the art"; that “*** if a person of ordinary skill in the art to which the claimed dimer of hexachlorocyclopentadiene relates would understand how the compounds of appellant's prior application can be used as intermediates, solvents,

insecticides or fungicides, the disclosure is sufficient”; and that the reference in section 112 "to 'any person skilled in the art' requires that we read and interpret the specific disclosure of utility against the background of knowledge possessed by such a person including the knowledge of any inherent utility of the claimed product."

4. SAME-SAME-SAME.

"A reasonable compliance with section 112 does not require that the earlier application here set forth a catalog of the specific insects and specific fungi against which the dimer is effective. It is sufficient if the product is disclosed as having toxic properties and if one skilled in this art is informed, as was done here, that the product is useful as an insecticide and fungicide. The details of its use, such as the selection of suitable strengths of the toxic materials to be used against specific insects or specific fungi seem to us to be expected skills of this art."

5. PATENTABILITY-REFERENCE-STATUTORY BAR UNDER 35 U.S.C. 102(B) — RIGHT TO FILING DATE UNDER 35 U.S.C. 120.

Held that on the basis of appellant's earlier disclosure, a person skilled in the art "would have no difficulty in preparing and using an effective insecticide or fungicide on the basis of that disclosure"; that "appellant's earlier application sufficiently complies with the first paragraph of section 112 in that regard"; and that "It follows, therefore, that under section 120, the later application should have been accorded the benefit of the filing date of the earlier one, and that the reference relied on is not a statutory bar to the grant of a patent on the later application."

APPEAL from the Patent Office. Serial No. 518,340.

Reversed.

Laurence and Laurence and Herbert I. Sherman (Dean Laurence of counsel) for Johnson.

Clarence W. Moore (Joseph Schimmel of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania designated to participate in place of Judge O'CONNELL

SMITH, J., delivered the opinion of the court.

This appeal is from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of claim 1 of appellant's application No. 518,340, filed June 27, 1955, for a patent on a condensation product of hexachlorocyclopentadiene. The appealed claim is as follows:

1. The dimer of hexachlorocylopentadiene having the formula C10Cl12 and having a melting range of 483 degrees to 487 degrees centigrade.

The reference relied on is Prins, "Rec. des. trav. Chim. des PaysBas," vol. 65, pages 455-67 (1946).

[1] The reference discloses the claimed dimer of hexachlorocyclopentadiene and, since it was published more than one year prior to the filing date of the instant application, it is a statutory bar under 35

U.S.C. 102(b) unless appellant is entitled under 35 U.S.C. 120 to rely upon the filing date of his earlier application No. 757,321, filed June 26, 1947 on which Patent No. 2,724,730 was granted November 22, 1956. The earlier application was copending with the appealed application and was filed less than a year after the date of the reference.

The issue here is whether appellant is entitled to rely upon 35 U.S.C. 120 to secure for the present application the benefit of the filing date of the earlier application. The resolution of this issue requires us to determine whether the invention here claimed was disclosed in the earlier application "in the manner provided by the first paragraph of section 112" of 35 U.S.C.

The examiner and the Board have held that the earlier application did not disclose the invention here claimed as required by section 120 and stated that the earlier application contained no disclosure of utility for the product here claimed. Appellant asserts that any person skilled in the art to which the claimed invention pertains would be able, with the teachings of the earlier application before him, to use the product (1) as chemical intermediates for organic synthesis, (2) for solvent uses and (3) for the preparation of toxic substances such as "insecticides, fungicides, etc."

No issue has been raised concerning appellant's identification of the claimed compound and disclosure of a method of making it in the earlier application. It is the position of the Examiner and the Board that the utility of the compound was not sufficiently disclosed therein. The earlier application contains the following assertion of utility:

The products of the aforesaid process are valuable as chemical intermediates for organic synthesis, for solvent uses and for the preparation of toxic substances such as insecticides, fungicides, etc.

[2] While the Examiner and the Board both stated that the earlier application did not contain a sufficient statement of the utility of the product here claimed, we find the paragraph just quoted to be sufficient for that purpose. Solvents, intermediates, insecticides and fungicides are products having utility. This meets the utility requirement of 35 U.S.C. 101. The question remains, however, whether the description of the manner and process of using the compound for these purposes as set forth in the earlier application is sufficient to meet the requirements of the first paragraph of 35 U.S.C. 112.

We have had occasion to consider the requirements of section 112 at some length and to discuss them in our recent opinion in In re Nelson and Shabica, 47 CCPA 1033, 280 F. 2d 172, 126 USPQ 242. We there stated:

The basic purpose of the requirement that the specification contain a written description of the invention is to put those skilled in the art in possession of sufficient knowledge "to enable" them to practice the invention. One cannot

read the wording of section 112 without appreciating that strong language has been used for the purpose of compelling complete disclosure.

[3] The test for sufficiency of compliance with section 112 as stated in the Nelson and Shabica decision is "what the application as a whole communicates to one skilled in the art." In elaborating on that test we said:

In some cases an applicant may, merely by naming his new instrument or material, indicate what its use is, as, for example, by saying he has invented a "match," "hammer," "paint," "adhesive," or "detergent." He may or may not have to go further in order to enable others to use the invention, depending on its nature and on how much those of ordinary skill in the art know. In other words, compliance with the law does not necessarily require specific recitations of use but may be inherent in description or may result from disclosure of a sufficient number of properties to make a use obvious; and where those of ordinary skill in the art will know how to use, the applicant has a right to rely on such knowledge. If it will not be sufficient to enable them to use his invention, he must supply the know-how. * * *

It is well settled that an applicant need not expressly set forth in his specification matters which are commonly understood by persons skilled in the art. Webster Loom Co. v. Higgins et al., 105 U.S. 580, 586; In re Chilowsky, 43 CCPA 775, 229 F. 2d 457, 108 USPQ 321. As was said in the former case:

That which is common and well known is as if it were written out in the patent and delineated in the drawings.

Accordingly, if a person of ordinary skill in the art to which the claimed dimer of hexachlorocyclopentadiene relates would understand how the compounds of appellant's prior application can be used as intermediates, solvents, insecticides or fungicides, the disclosure is sufficient. We therefore do not agree in this case with the Board's

statement:

Whether the utility is inherent or not is not the question. The same must be discovered or determined for the completion of an invention.

The issue here is an issue involving adequacy of the disclosures of end uses of the claimed product when tested by the first paragraph of section 112. The reference therein to "any person skilled in the art” requires that we read and interpret the specific disclosures of utility against the background of knowledge possessed by such a person including the knowledge of any inherent utility of the claimed product. The earlier application discloses utility of the claimed dimer as an intermediate for organic synthesis 1 and for solvent uses in addition to

1

1 In Reiners v. Mehltretter, 43 CCPA 1019, 236 F. 2d 418, 111 USPQ 97, this court found utility of a product where the only use alleged was that it could be used as an intermediate in producing other materials which were directly useful. In this connection, the opinion states:

But in order to establish utility of a product it is not necessary to show that it can immediately and without change perform a useful function. Products are useful if they serve as starting materials or intermediates in producing other materials or articles which are directly useful (p. 1025).