you already know about. Similarly, with respect to other reactions ***, other hydrolysis and oxidation procedures were suggested and we have no doubt that those skilled in the steroid art would know of many other reactions in which they could use these intermediates in the course of their resarch. Are appellants entitled to a patent on this disclosure? We think they are. We are unable to see any fatal defect with respect to the disclosure of how to use the invention." *Id. 23. UTILITY-In re Bremner et al.-The rule on disclosure of "utility" in a specification of the Bremner case (37 CCPA 1032, 182 F. 2d 216, 86 USPQ 74), that the law required "an assertion of utility and an indication of the use or uses intended," Held fully met in appellants' application in that "They have asserted that their new steroid compounds are useful and they have indicated that the intended use is in the field of steroid chemistry wherein they have utility as intermediates in synthesizing other steroid compounds"; and Held that "nothing in the Bremner case requires more." *Id. 24. SAME SAME.-"The Bremner case requires that the specification must 'indicate' the use or uses of the invention intended by the applicant. The court held that the Bremner et al. application, in spite of its disclosure of 'resins' and melting points, contained nothing indicating a use, and the rejection was sustained. Now, it was strenuously argued that anyone skilled in the art would know what to do with the 'resins' disclosed, that all new chemical compounds have obvious utility as intermediates, citing Ex parte Watt, 63 USPQ 163, 165, and a Lewers article, 4 J.P.O.S. 530, 542, and hence utility may be assumed as to all new compounds. The court's answer was that the applicants' specification has to indicate the intended use or uses, which is a requirement distinct from the mere possession of 'utility.' We are not disposed to alter this requirement, which has now been the case law for a decade. We do believe, however, that its rationale needs elucidation." *Id. 25. SAME-35 U.S.C. 112 CONSTRUED.-"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. There always exists, on the part of some people, a selfish desire to obtain patent protection without making a full disclosure, which the law, in the public interest, must guard against. Hence section 112 calls for description in 'full, clear, concise, and exact terms' and the 'best mode' requirement does not permit an inventor to disclose only what he knows to be his second-best embodiment, retaining the best for himself." *Id. 26. SAME SAME EACH CASE MUST BE JUDGED ON ITS OWN FACTS.—“In keeping with the policy and spirit of this law, the rule of the Bremner case requires, as a minimum, that the inventor ‘indicate' a use for a new composition. * * *, Nelson and Shabica did this, the use being as an intermediate in research on a specific class of steroids. In adhering to the Bremner rule we wish to make it clear, however, that the test is what the application as a whole communicates to one skilled in the art. 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. As this court has often said before, each case must be judged on its own facts." *Id. 27. SAME-In re Bremner et al. DISTINGUISHER.-"Contrasting the disclosure of Bremner with that of the instant application, Bremner was completely silent as to what his polymers could be used for and did not disclose enough as to their properties to enable one even to make an intelligent guess as to a use. Bremner was the first to make polymers of dihydropyran. No one knew anything about them. Nelson and Shabica, on the other hand, were not 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." *Id. 28. SAME In re Bremner et al. CONSTRUED.-"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." *Id. 29. UTILITY-In re Perrigo DISTINGUISHED.-In response to reliance by the Patent Office on In re Perrigo, 18 CCPA 1323, 48 F. 2d 965, 9 USPQ 152, Held that "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." *Id. 30. SAME-ONE STANDARD OF UTILITY TO BE APPLIED IN EX PARTE AND INTER PARTES CASES.-"All we are concerned with here is whether an application contains sufficient disclosure to comply with the law.** * *. Insofar as this decision has an effect on the requirements of application disclosures, it will apply equally in inter partes an 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 establishing 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." *Id. 31. NEW MATTER.-The Examiner's refusal to enter an amendment found to be "an addition to the disclosure" and to go beyond "what is permitted by 35 U.S.C. 132 and Patent Office Rule 118" Held proper. *Id. 32. UNNECESSARY TO HAVE A SPECIFIC EXAMPLE TO SHOW LIMITATION INHERENTLY SUPPORTED BY THE SPECIFICATION.-In connection with an affidavit to show that solid alkali metal carbonate was present during the homogeneous phase oxidation for producing cumene hydroperoxide from cumene, described in appellants' specification, the affidavit being based upon the process of an Example 4, where instead of using sodium hydroxide, sodium carbonate was substituted therefor, Held that "if there is appropriate language in the specification whereby one or more of the examples could be converted' to a carbonate process, it is unnecessary to have a specific example drawn to such a process to show the limitation in issue is inherently supported by the specification"; and Held that "In view of the equivalency which appellants teach for the various alkaline substances in their specification, and in view of the function which those substances play in the process, we feel that the conversion of Example 4 to a carbonate process from a hydroxide process is clearly within the scope of the *** disclosure." *In re Godfrey Paul Armstrong, et al., 422 33. AFFIDAVIT IN CONNECTION WITH CLAIM LIMITATION.-Upon consideration of the objection by the Board of Appeals to appellants' failure to follow, in the affidavit test, the steps of their Example 4 exactly or to explain satisfactorily why they did not, Held that "As a general rule strict adherence to the steps described in the specification is essential if appellants wish to prove that those steps do in fact meet claim limitations"; and Held that "it is the specification that is supposed to support claim limitations, not some other means contrived by affiants." *Id. 34. SAME. "While the Board of Appeals is correct to the extent that departures from Example 4 do in fact exist, and as such the affidavits should receive the closest of scrutiny, we find that none of those departures affect the process in question, and therefore they are of no pertinence. In this case we are satisfied that Baird (affiant) followed the steps of Example 4 sufficiently closely to render his affidavit of probative value with respect to the issue of the inherency of the limitation in issue. We find the deviations from that example to be inconsequential with respect to the question whether sodium carbonate is or is not present in its solid form and is in contact with cumene in that form during its oxidation to the hydroperoxide." *Id. 35. BREADTH OF CONCEPT AND OF CLAIMS.-"There can be no doubt that appellants' application, as filed, clearly indicated that they regarded their invention as broad enough to embrace all the compounds covered by the appealed claims. This is clear not only from the fact that the appealed claims were included in the application as filed, but also that the statement of the invention in the first paragraph of the specification is virtually a paraphrase of appealed claim 1. Accordingly, the claims are not too broad in the sense of embracing a concept which was not stated in the original disclosure of the application." *In re Chester John Cavallito and Allan Poe Gray, 533. 36. SUFFICIENCY OF DISCLOSURE.-"The mere statement of an inventive concept, ***, is not a sufficient basis for claiming it. Sufficient information must be given to enable those skilled in the art to practice the invention." *Id. 37. UTILITY-UTILITY PREREQUISITE TO PATENTABILITY.-"The appealed claims are drawn to compounds per se and are not limited in any way to uses of such compounds. Nevertheless, a compound is not patentable unless it has utility and a manner of using it is either obvious or is described in the application. Utility is a prerequisite to the patenting of an invention." *Id. 38. SAME PATENTABILITY-COMPOSITION OF MATTER-CLAIMS TO ARTIFICIAL SELECTION OF COMPOUNDS.-"It is not necessary to determine whether the presence of one or two useless compounds within the scope of a claim to a chemical compound would render it unpatentable, but where the applicant seeks to obtain a monoply in exchange for his disclosure of a group of compounds there should be a disclosure which gives reasonable assurance that all, or substantially all of them are useful. That is especially true where, * * *, the claims are not drawn in terms of a recognized genus but are directed to a more or less artificial selection of compounds. There is no reason why a claim drawn in this way should not be limited to those compounds which are shown to be both new and useful. An applicant is not entitled to a claim for a large group of compounds merely on the basis of a showing that a selected few are useful and a general suggestion of a similar utility in the others." Id. 39. SAME EVIDENCE OF UTILITY.-"Since the Examiner did not question or call for proof of the statement in appellants' application that "The compounds have utility as hypotensive agents,' and since he allowed claims covering the specific compounds disclosed, it is reasonable to assume that he accepted the quoted statement as establishing that those compounds had a sufficient hypotensive effect to render them useful. However, there is nothing of record to indicate that they all had the same hypotensive potency, hence nothing which would justify the conclusion that changes in the so-called 'garbage substituents' do not affect that potency. If it were shown that all of the thirty specific compounds disclosed had equal hypotensive potency, that fact would strongly indicate that the potency was derived solely from the basic structural formula common to all of them. On the other hand, wide variation in such potency would suggest that it was due in part to the added substituents and might be eliminated or even reversed by many of the possible substituents which had not been tried." *Id. 40. SAME-SAME.-"Further evidence that changes in substituents did not affect the basic utility of the compounds might have been afforded by the use of substituents such as ephedrine or dexedrine radicals which normally have a hypertensive effect. If compounds of the kind claimed here, containing such radicals, possessed the same hypotensive potency as those having neutral substituents, that fact would afford a strong indication that the same would be true of the other substituents within the scope of the claims." *Id. 41. SAME-SAME.-Held that, absent evidence that changes in substituents did not affect the basic utility, "we do not think that the fact that thirty of a group of several hundred thousand possible compounds, selected at random or in some manner not disclosed, have some unspecified potency as hypotensives, is sufficient to establish that all or substantially all the compounds of the group are useful hypotensive agents." *Id. 42. NEW MAtter—SubseQUENT INTRODUCTION OF A NEW NAME OR FORMULA FOR A COMPOSITION OF MATTER.-The original description in appellant's application of a product as "a white microcrystalline precipitate of melting point 167.5-171.5° C." and the reference therein to it as an antitubercular agent, Held insufficient to warrant identifying the product as "Hexahydro-1,3,5-tri-isonicotinamido-s-triazine monohydrate" [rather than, as originally, as "1,1'-methylenebis (2-isonicotinylhydrazine)"], and claiming the product in terms of that new name rather than by its method of production; and such change in name (or formula) Held to involve new matter. Ex parte Herman Herbert Fox, 28. 43. COMPOSITION OF MATTER.—“* * * a product may be characterized by its method of production, formula, name or tests by which it may be identified apart from its method of production.” b Id. 44. SAME."*** the tests employed by appellant in his affidavit to establish the structure of the product are quite extensive and are intended to afford a full and complete identification thereof and we feel that this is a clear indication that the original identification of the product was wholly insufficient and showed the need for further and complete identification and is an admission that appellant now so considers the disclosure." Id. b Drawing 45. 35 U.S.C. 113-RULES 81 AND 84-PHOTOLITHOGRAPHS OF PHOTOGRAPHS.Upon review of the draftsman's objections to photolithographs of photographs of complex metallurgical microstructures, Held that "Under the statute (35 U.S.C. 113) and rules, the settled practice is that when a drawing is described in the application, ***, the application is not complete, unless the described drawing, prepared in accordance with the standards and requirements of Rule 84, accompanies the papers (Rule 81)"; that "Clearly photolithographs of photographs are not the drawings required by the rules,"; and that "the draftsman's statement that photolithographs of photographs are objectionable was proper." In re Ihrig, 1. 46. PHOTOGRAPHS-COMMISSIONER'S NOTICE (747 O.G. 789) CONSTRUED.-With regard to the Commissioner's notice (747 O.G. 789), which provides that the Patent Office is willing to accept "black and white photographs or microphotographs (not photolithographs or reproductions of photographs) printed on sensitized paper," in lieu of India ink drawings, to illustrate inventions restricted to five specified categories, Held that "The notice is interpreted to require that the area of the paper surrounding the photograph (or photomicrograph) as well as the photograph itself, be sensitized, the photograph being printed on a portion of such sensitized paper." Id. Filing Under 35 U.S.C. 121 and Rule 147 47. "Rule 147, based on 35 U.S.C. Section 121, provides that signing and execution of the application papers may be omitted where an application is filed for a non-elected invention, one not elected after a requirement under Rule 142." In re Application Papers of Shearer, 3. 48. "There being no basis for a requirement for restriction in the parent application, and none having been made, there is no basis for according to petitioner the benefits of Rule 147"; and Held that “*** the action Inventorship 49. JOINT APPLICATION PRIMA FACIE EVIDENCE OF JOINT INVENTORSHIP.—“It is well settled that a duly executed joint application is prima facie evidence of joint inventorship; *Wilbur M. Van Otteren v. Wil liam J. Hafner et al., 331. 50. EVIDENCE-INTERFERENCE.-"Hafner, who at the time of taking testimony was hostile to Cork, indicated in his testimony that he could not recall any significant contribution to the invention which had been made by the latter. However, when the Hafner and Cork application here involved was executed, several years prior to the taking of testimony in the instant interference, Hafner stated under oath that he believed Cork to be a joint inventor with him of the carrier disclosed and claimed in that application, and it seems unlikely that his recollection of the circumstances surrounding the making of the invention had improved during that interim. Moreover, the fact that, during the same period, Hafner had left Cork's company and become associated in a business way with the Grover Company, Van Otteren's assignee, necessarily lessens the weight of his testimony." *Id. 51. INTERFERENCE-PRIORITY-CONTRIBUTION OF ONE OF JOINT INVENTORS INURES TO BENEFIT OF PARTY.-Where there was nothing of record which overcame the presumption of joint inventorship arising from the joint application of Hafner and Cork, Held that "such contributions to the invention as are shown to have been made by Hafner must inure to the benefit of the party Hafner and Cork." *Id. APPLICATION CLAIMS GIVEN BROADEST INTERPRETATION. See Claims, 12. APPLICANT'S RIGHT TO CHOICE OF LANGUAGE. See Claims, 8. BASIC CONCEPT OF INVENTION. See Interference, 267. BENEFIT OF EARLIER FILING DATE IN THE UNITED STATES. See BEST MODE OF CARRYING OUT INVENTION. See Application, 21. See Appeal to U.S. Court of BREADTH OF CONCEPT AND OF CLAIMS. See Application, 35. BROAD INVENTIVE CONCEPT INVOLVING THE USE OF TWO CLASSES OF MATERIALS. See Patentability. 48. BROADENED CLAIMS. See Reissue, 1, 2, 3. BROADER THAN DISCLOSURE. See Claims, 1. See Design, 6. CHANGE OF DEGREE. See Patentability, 21. CHANGE OF THE RELATIVE SIZE OF CO-ACTING MEMBERS. See Patentability, 13. CHANNELS OF DRUG DISTRIBUTION. See Trademark, 77. CHANNELS OF TRADE. See Trademark, 62, 96, 100. CITED PRIOR ART. See Patentability, 95. CIVIL ACTION IN CASE OF INTERFERENCE 35 U.S.C. 135 and 146 1. COMMISSIONER MAY ISSUE PATENT.-"The statute provides that the 'question of priority of invention shall be determined by a Board of Patent Interferences *** and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor.' 35 U.S.C. § 135. We think this means just what it says. We see nothing to suggest that applicants who, like these appellants, are adjudged not to be prior inventors, can require the Commissioner to withhold the patent while |