Our reading of the Board's initial opinion leads us to the conclusion that the basic reason for denying benefit of the parent filing date was the Board's fact finding of inconsistency and repudiation. We felt some insecurity as to the correctness of this interpretation after reading the Board's opinion on reconsideration, for reasons we shall explain. But the Solicitor reestablished our confidence in our original interpretation of the Board's initial opinion by the following passage in his brief: * it is important to note that their [the Board's] denial of the benefit of the filing date of the parent case is based upon the finding that the indicated utility of the same species of compound is inconsistent with and a repudiation of that disclosed in the parent case. Not only does the Solicitor thus confirm our interpretation but he makes it even more definite in continuing the rationale which he there found, in saying: In the light of these established principles [requiring indication of utility in an application to render it allowable], it is submitted that the statement in the parent case of the intended utility, which appears now to be erroneous, because of the later statement of an inconsistent indication of usefulness in the involved application, should be considered as though, [sic] it had never been presented in the parent application. [Emphasis ours.] This is a suggestion to regard, ex post facto, the parent case utility statement as a nullity. The Board did not go so far in words, but its decision has the same effect. When the appellant received that decision, he filed a request for reconsideration accompanied by evidence to disprove the factual assumption of inconsistency which underlay the Board's decision. This evidence was in the form of an affidavit by Alonzo M. Lands, Ph.D. in physiology, University of Kansas, with 12 years of university teaching experience and 17 years in research, since 1947 head of the Pharmacodynamic Section of the Biology Division of the Sterling-Winthrop Research Institute at Rensselaer, New York. Attached to the affidavit were two 1955 publications. To summarize the evidence, it is to the effect that the same compound can possess curarimimetic activity and anticholinesterase activity and the ability, in proper dosage, to be a curare antagonist by virtue of its anticholinesterace activity. Specifically the material known as Win 8078, which is, as the Solicitor admits, the compound of the Arnold et al. reference and of Example 2 of the instant application and Example 5 of the parent case, possesses these properties.* We find the evidence persuasive that the supposed inconsistency which One of the 1955 publications, that of James O. Hoppe, Ph.D., entitled "Observations on the Potency of Neuromuscular Blocking Agents With Particular Reference to Succinycholine," discusses the mechanism of action of curarimimetic drugs. This article indicates that the type of "neuromuscular blockade" produced by d-tubocurarine, one of the curare alkaloids, "is susceptible to reversal by means of anticholinesterase drugs." It appears therefore that since an anticholinesterase drug acts to reverse the action of a curarimimetic drug, that the former may aptly be classified as curare antagonistic. This fact also is clearly shown in the Hoppe publication. appeared to the Board is nonexistent. This removes the factual basis for its original decision and without that support it falls. When faced with this evidence, the Board accepted it for consideration "as an argument supplementing the arguments in the petition” under M.P.E.P. ¶1212 and In re Martin, 33 CCPA 843, 154 F.2d 126, 69 USPQ 275, but shifted its ground so as to be able to say that there is "no basis in petitioner's arguments for altering our decision.” This new position adopted by the Board was that the disclosure in the parent case contained "deficiencies" in that it failed to disclose that the claimed compounds "may function both as curarimimetic agents and as anticholinesterase or curare-antagonizing agents depending upon whether they are used in large or in minute dosages." Or, to adopt other language from its opinion denying reconsideration, it held that appellant "could not rely on" the parent case because it did not disclose "the utility asserted in the instant application.” [Emphasis ours.] It thus completely abandoned its inconsistency theory and at the same time promulgated a new one. Notwithstanding these events prior to the appeal to this court, the Solicitor here has attempted only to sustain the original theory of the Board and makes no effort to support the thesis that the utility disclosed in the later application must also be found in the disclosure of the parent case in order to make it possible to have the benefit of its filing date under section 120. His effort to sustain the existence of factual inconsistency or to answer the evidence submitted by the appellant is too unpersuasive for detailed discussion and rests ultimately on the proposition that we should disregard the Lands affidavit because the publication relied on therein was published long after the filing of the parent case. We see no logical connection between that fact and the fact of inconsistency of disclosure. Appellant's brief before us correctly points out: Example 4 of the parent application (R-176) lists specific data showing "curarimimetic activity" and "anticholinesterase activity" for the identical compound. While this compound is not within the scope of the instant claims, Example 4 clearly shows that "curarimimetic activity" is not inconsistent with "anticholinesterase activity" else the same compound couldn't possess both activities. Appellant also refers to the commonplace analogy of ethyl alcohol, the alcohol present in potable alcoholic beverages, pointing out that there would be no inconsistency in describing it as both a stimulant and a sedative. Notwithstanding the Solicitor's attempt to sustain the Board's initial position that the parent case utiliy disclosure was repudiated by a later inconsistent disclosure, and the filing of his brief after appellant's brief and in answer thereto, he has not answered these arguments, nor even acknowledged their existence. This failure becomes even more significant viewed in the light of the fact that at oral argument the Solicitor continued to maintain the position that the utility disclosure of the parent case was completely negated by the disclosure of the later application. When aked by the court whether the issue was not that the two applications must disclose the same utility, he said that was not the issue and told the court that it was necessary to go into the fact issue of inconsistency. Thus did he fail to support the position taken by the Board in its second opinion on the petition for reconsideration. Always lurking in the background of the argument of the Patent Office is an echo of a theory which was initially propounded by the Examiner but never really pursued before us, namely, that "the invention" in the case of a new chemical compound is not the compound itself (as a "composition of matter" within the contemplation of section 101, 35 U.S.C.), but is a compound coupled with a disclosed use. This interesting metaphysical concept led the Examiner to take the position that a disclosure of compound X having anticholinesterase activity is a disclosure of a different "invention" than compound X with curarimimetic activity even though the claims are directed to compounds per se without a use. This was the reasoning of the Scudi case, cited by the Board, and was urged by Coan in the Biel v. Coan case. We think the Board of Interference Examiners gave a very good answer in the latter case when it said: Coan's view is untenable and if adopted could lead to extraordinary results. Thus, the same compound could be repatented as often as a new use could be found, merely on the ground that the invention was different and even an infringer of a patented compound could escape by the same route. [3] What might be termed the Examiner's "complete invention theory" in chemical cases, confuses, it seems to us, the invention itself which is the subject matter claimed-in cases of this type the new chemical compound-with one of the factors which is taken into consideration in determining whether the invention is or is not patentable from the standpoint of meeting 35 U.S.C. 103. As was said in Biel v. Coan, where the claim contains no "use" limitation, "we know of no authority, theory or reason" for requiring that a parent case disclose the same utility as a later application to entitle the latter to the benefit of the filing date of the parent. [4] Assuming the common inventorship, copendency, and crossreference required by section 120, that section further requires only that the invention be disclosed in the parent application in such manner as to comply with the first paragraph of section 112 and be the same invention as that disclosed in the later application. It does not require that the invention be described in the same way, or comply with section 112 in the same way, in both applications. And to determine what is the invention under consideration, one must be governed by the claims of the later application, because it is there one must look to determine what invention the "application for patent" referred to in the opening words of section 120 is for. The decision of the Board is reversed. REVERSED. KIRKPATRICK, J., with whom WORLEY, Chief Judge, joins (concurring): I concur with the result, basing my concurrence on my interpretation of the affidavit submitted that the word "curarimimetic" is equivalent to "neuromuscular blocking agent" and, in that sense, ambiguous. Therefore, it is neither a change of utility nor a contradiction of utility but a clarification for the applicant to assert that his drugs have anticholinesterase activity and are antidote for d-tubocurarine since in the prior art neuromuscular block was accomplished by drugs acting such as d-tubocurarine for which anticholinesterase drugs are antidotes and by drugs acting in another manner not fully understood for which anticholinesterase drugs were not antidotes but, in fact, active agents, depending on the dosage. U.S. Court of Customs and Patent Appeals IN RE OSKAR SUS AND WERNER SCHAEFER No. 6778. Decided July 25, 1962 [49 CCPA 1301; 784 O.G. 723; 306 F.2d 494; 134 USPQ 301] 1. CLAIMS-BROAD AS DISCLOSURE. "The public purpose on which the patent law rests requires the granting of claims commensurate in scope with the invention disclosed. This requires as much the granting of broad claims on broad inventions as it does the granting of more specific claims on more specific inventions. It is neither contemplated by the public purpose of the patent laws nor required by the statute that an inventor shall be forced to accept claims narrower than his invention in order to secure allowance of his patent. It is, however, consistent with this public purpose embodied in the pertinent statutory requirement that the invention claimed shall be no broader than the invention set forth in the written description forming a part of the specification." 2. SAME-BROADER THAN DISCLOSURE-35 U.S.C. 112. "As we view the appealed claims they fail to meet the requirements of 35 U.S.C. 112 in that they are broader than the invention described in the written description thereof as set forth in the specification. The terms ‘aryl and substituted aryl radicals' or 'substituted and unsubstituted aryl radicals' as used in the rejected claims do not particularly point out and distinctly claim the particular aryl azides, the 'obtention' of which is one of the stated objects of the invention, and the use of which appears to be essential to securing the asserted novel results on which applicants have predicated their right to a patent." 3. SAME CONSTRUCTION OF CLAIMS-TERM GIVEN BROADEST POSSIBLE MEANING IN ABSENCE OF DEFINITION IN SPECIFICATION. "To encompass all the possible meanings of 'aryl,' since no particular meaning has been ascribed to it in the specification, we must give the term its broadest possible meaning in determining just what appellants are claiming as the subject matter which they regard as their invention." 4. SAME BROADER THAN DISCLOSURE-35 U.S.C. 112. "An applicant cannot under 35 U.S.C. 112 claim a broader invention than that set forth in the written description contained in his specification." Serial No. 430,978. APPEAL from the Patent Office. AFFIRMED. James E. Bryan and Thomas, Crickenberger and Bryan for appellants. Clarence W. Moore (Jack E. Armore 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 SMITH, J., delivered the opinion of the court. The comparatively simple legal issue which emerges from the rather complex technical aspects of the application involved in this appeal is whether the rejected claims are broader than the written description of the invention and thus do not meet the requirements of 35 U.S.C. 112. The Examiner and the Board have held that they do not. Appellants contend on this appeal that they do. For reasons to be more fully set forth in this opinion, we agree with the Board. The claims on appeal are claims 24, 26, 30, 36, 38, 42, 48, 50, 54, 62 and 66 of appellants' application Serial No. 430,978, filed May 19, 1954, entitled "Light Sensitive Material and Process." Four claims, 33, 45, 57 and 69 have been allowed by the Examiner. The remaining claims of the application have been withdrawn from consideration as not reading on the elected species. The written description of the invention found in the specification shows that it relates to a class of light-sensitive organic compounds, known as aryl azides or aromatic azido compounds, and to the employment of these compounds as coatings on planographic printing plates particularly for use in offset flat printing by a photo-mechanical process. Appellants acknowledge that use of the broad class of such lightsensitive materials was known previously, but assert in the specification that: 1 The pertinent portions of 35 U.S.C. 112 to be here considered are: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his inven tion. [Emphasis added.] |