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422 F. 2d 897; 164 USPQ 636 IN RE Lynn B. WAKEFIELD AND FREDERICK C. FOSTER (No. 8192)

PATENTS

1. CLAIMS-DUPLICATE OR REDUNDANT

There is no statutory authority for rejecting claims as unnecessary; applicant should be allowed to determine the necessary number and scope of claims, provided he pays required fees and otherwise complies with statute; instant invention was not obscured by 40 claims; court notes that each of 26 appealed claims is relatively brief and clear in its meaning and that claims were clear enough for examiner to apply references against all of them in

his first action. 2. PATENTABILITY-COMPOSITION OF MATTER

There is no convincing evidence that presence or absence of impurities would affect the product; since claims do not recite presence or absence of any impurities other than naturally occurring ones, court concludes that such limitations are not essential to applicants' case for patentability; applicants should not be required to show how various nonessential impurities could be added

to recited elements of their polymer. 3. AFFIDAVITS-ANTICIPATING REFERENCES

Where product shown in Rule 131 affidavits falls under a group of claims, it is of no significance that it alone would not support broader claims; court rejected test that affidavits must show composition which reference shows, stating that affidavits must contain facts showing completion of the invention commensurate with extent the invention is shown in reference, whether or not

it be a showing of identical disclosure of reference. 4. PATENTABILITY-COMPOSITION OF MATTER

Claims reciting nothing about gel do not define an invention predicated for patentability upon presence or absence of gel. 5. AFFIDAVITS-ANTICIPATING REFERENCES

Rule 131 affidavits overcome reference where they show manufacture of claimed product by use of lithium-based catalysts whereas reference shows its preparation using Ziegler catalysts; applicants possessed claimed product

as fully as reference did, and before reference's date. 6. WORDS AND PHRASES

Purified natural product cannot be called "synthetic;" rather, "synthetic" connotes an artifically compounded or built-up product. 7. PATENTABILITY—COMPOSITION OF MATTER

Tentative conclusion, based on similarity of structure and gross characteristics, that synthetic product is so similar to purified natural product as to be prima facie obvious, is rebutted where there was, at time invention was made, no known or obvious method of making claimed composition or where claimed composition possesses unexpected characteristics.

8. CLAIMS-INDEFINITE-IN GENERAL

CLAIMS-INDEFINTE-CHEMICAL

35 USC 112 does not require that claims define "the invention;" second paragraph of section 112 requires that claims define “subject matter which the applicant regards as his invention"; this means that applicant must set definite boundaries on patent protection sought; thus, claims need not recite catalytic impurities which examiner alleges are contained in claimed polymers, where applicants do not regard such impurities as being present in polymers,

much less regard them as element of invention. 9. CLAIMS-SPECIFICATION MUST SUPPORT

Rejection of claims as being broader than invention described in specification is an assertion that specification is insufficient to support claims of breadth sought; proper statutory basis for such rejection is first paragraph of 35 USC

112. 10. CLAIMS-INDEFINITE-CHEMICAL

Fact that large number of substances is encompassed by claims, through the possible addition of unrecited impurities, does not make claims indefinite, since scope of claims is still definite because each recited limitation is definite.

United States Court of Customs and Patent Appeals, March 12, 1970*

APPEAL from Patent Office, Serial No. 199,603 [Modified]

Edward 8. Irons, Mary Helen Sears, Irons, Birch, Swindler & McKie, Stanley M. Clark, H. N. Harger, attorneys of record, for appellants.

Joseph Schimmel for the Commissioner of Patents. Raymond E. Martin, of counsel.

(Oral argument November 3, 1969 by Miss Sears and Mr. Martin)

Before Rich, ALMOND, BALDWIN, LANE, Associate Judges, and MATTHEWS, Judge, sitting by designation.

LANE, Judge, delivered the opinion of the court:

This appeal is from the decision of the Patent Office Board of Appeals, which affirmed the rejection of product claims 1–3, 5–8, 10–17, 19–22, 24–26 and 28–31 in appellants' patent application serial No. 199,603, filed June 4, 1962, for “Essentially Cis Rubbery Polyisoprene and Method for Making Same.” The application is a continuation-inpart of applications serial No. 530,396, filed August 24, 1955, and serial No. 605,438, filed August 21, 1956. Four method claims have been allowed.

The Diclosure

а

The application discloses a method of making a synthetic polyisoprene having essentially the molecular structure of natural Hevea rubber, i.e., at least 80% cis-1,4, not more than 10% trans 1,4, not more than 10% 3,4, and practically no 1,2, structure. The synthetic product will then have the advantageous properties of natural rubber but will not contain the proteins, soaps, resins and sugars which are disadvantageously present in natural rubber. The disclosed process of making the synthetic product involves the use of a catalyst which may be metallic lithium, a hydrocarbon lithium compound, a crystalline salt in admixture with colloidally dispersed lithium metal, a composite comprising either lithium metal or a lithium hydrocarbon in association with a fluorine-containing salt, or a Ziegler type catalyst. Information on selection and use of each of the catalysts is set forth in the specification but is unnecessary for an understanding of the issues here. Seventeen examples are disclosed in the specification to detail the use of the various types of catalysts.

* Petition for rehearing granted May 21, 1970. See Per Curiam opinion on page 968.

The Invention

Claim 1 is illustrative of the claims on appeal.

1. A synthetic homopolymer [of] isoprene combining the desirable properties of both Hevea and sulfur vulcanizable synthetic rubbers characterized by at least 80% cis-1,4 structure, not in excess of 10% trans-1,4 structure, not in excess of 10% 3,4 structure, and essentially no 1,2 structure, said homopolymer being free from the proteins, soaps, resins and sugars present in natural Hevea rubber. The other appealed claims add one or more limitations to the subject matter of claim 1, and we shall discuss them in more detail later.

Prior Art

Horne, U.S. patent 3,114,743, issued December 17, 1963, filed December 2, 1954, discloses a cis-1,4 polyisoprene rubbery polymer which has essentially the same structure and physical properties as natural Hevea rubber. Horne states that all of the isoprene formed by his method is of the cis-1,4 structure and that it is free from protein, soaps, resins and sugars. Applicants attempted to remove Horne as a reference by submitting affidavits under Rule 131.

The examiner and the board also applied Davis et al., Chemistry and Technology of Rubber, 1937, pp. 91-92, alone as a reference under 35 USC 103. Davis discloses the structure of natural Hevea rubber and describes attempts to purify it.

The Examiner

The examiner rejected all the appealed claims for undue multiplicity under 35 USC 112 and required that applicants either reduce the number of claims to fifteen or select fifteen claims for further examination on the merits. Applicants traversed this rejection and provisionally elected fifteen claims for further prosecution. The examiner refused to withdraw the multiplicity rejection and continued to apply it to all claims. He also rejected all the claims for failing to define the invention and for obviousness in view of Davis. He further rejected claims 1, 3 and 5-8 for lack of novelty based on Horne, and the remaining claims for obviousness in view of Horne.

The Board

The board affirmed all of the examiner's rejections. We shall separately treat each affirmance and state our opinion with regard thereto.

Opinion (a) Multiplicity

[1] The board stated that many of the claims recite "only the obvious vulcanizate of the homopolymer, with varying recitations of its properties stemming from the negative recitation” appearing in claim 1. Other claims said the board, merely give a somewhat more restricted range of percentages of the various structures in the polymer. The board agreed with the examiner that if the polyisoprene is adequately defined in each claim, then claims reciting the inherent properties of the polymer are unnecessary and tend to confuse the issue. The board held the number of claims to be unreasonable and to have the effect of obscuring the invention rather than pointing it out as required by 35 USC 112. The board's affirmance of the multiplicity rejection, therefore, is based upon the view that the many different definitions of appellants' invention were both unnecessary and confusing. We disagree on both points. It is rarely possible to determine necessity for narrower claims at the time of prosecution. An applicant often does not know all the prior art which may be asserted against his broader claims when he litigates his patent. Further, he is never sure that the broader claims will not be successfully attacked on other grounds when litigated in the courts. See, e.g., Graver Tank v. Linde Air Products, 336 U.S. 271 (1949). Moreover, there is no statutory authority for rejecting claims as being "unnecessary.” For these reasons, an applicant should be allowed to determine the necessary number and scope of his claims, provided he pays the required fees and otherwise complies with the statute. This brings us to the board's view that the number of claims was so large as to obscure the invention, thereby failing to comply with the second paragraph of 35 USC 112. Again we disagree. Each appealed claim is relatively brief and clear in its meaning. Examination of forty claims in a single application may be tedious work, but this is no reason for saying that the invention is obscured by the large number of claims. We note that the claims were clear enough for the examiner to apply references against all of them in his first action. We conclude that the board erred in affirming the multiplicity rejection. (b) The rejections on Horne

We now come to the rejections under 35 USC 102 and 103 based on the Horne patent. Horne was cited under section 102(e) and applicants sought to remove the reference by submitting affidavits under Rule 131. The examiner found that the affidavits were insufficient in breadth to remove Horne as a reference against the claims. He considered the claims broad as against Horne in several respects which we shall separately treat.

[2] The first aspect of breadth considered by the examiner was that the claims contain no limitation as to catalytic impurities which he believed would be present in the product and would affect its properties. Horne used Ziegler type catalysts. The affidavits show appellants? use of lithium-based catalysts. The claims cover products containing either type impurity, and the examiner considered them broad for this reason. The board apparently agreed, pointing out that the type of catalyst used might result in significantly different products. Appellants disputed vigorously that their product contained any lithium end groups. We find it unnecessary to decide that question here, because there is no convincing evidence in the record that the presence or absence of such impurities would affect the product. Since the claims do not recite the presence or absence of any impurities other than the naturally occurring ones, we must conclude that such limitations are not essential to appellants' case for patentability. Appellants should not be required to show how various nonessential impurities could be added to the recited elements of their polymer. This is making a breadth problem where none exists.

[2] The second aspect of breadth considered by the examiner was the gel content of the product. It was the examiner's position that the product shown in appellants' Rule 131 affidavits "is not the same polymer disclosed by Horne and does not support the broad claim.” This conclusion was derived from the fact that the product shown in the attachments to the affidavits was stated therein to contain "considerable hard, non-dispersable gel," whereas Horne states that his product is adaptable to be gel-free. Although the board nowhere mentioned this issue, we consider it to have been fairly raised by the examiner. It is necessary, in treating this issue, to separate the claims which contain no limitation as to the presence or absence of gel from the claims which recite that the product must be "substantially gel-free.” 1

As to the first group, the examiner's contention that the product shown in the affidavits, called CPP 1196,2 does not "support the claim” is irrelevant. It is uncontested that CPP 1196 is in fact a compound falling [3] under this first group of claims. The fact that it alone would not support the broader claims is of no significance. See In re Clarke, 53 CCPA 954, 960, 356 F.2d 987, 991, 148 USPQ 665,

1 The latter group comprises claims 2, 7, 16, 21, 25 and 30.

? The examiner referred to this product as CP 1198. This was apparently inadvertent, since we find no other reference in the record to a product so designated.

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