Application of Koller
Decision Date | 24 January 1980 |
Docket Number | Appeal No. 79-589. |
Citation | 613 F.2d 819 |
Parties | In the Matter of the Application of Horst KOLLER, Alfons E. Hartl and Gerhard Kirchner. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Roger L. Browdy, Washington, D. C., attorney of record, for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents and Trademarks, Harry I. Moatz, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NEWMAN, Judges.*
This is an appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 1-3 and 5-14 in appellants' application serial No. 582,774, filed June 2, 1975, entitled "Method of Isomerizing Humulone to Isohumulone by Catalytic Acceleration with Metal Salts."1 The claims are rejected as anticipated under 35 U.S.C. § 102. We reverse.
Appellants claim a method for producing isohumulone from humulone. Isohumulone is a chemical said to be useful as a tuberculosis retardant. It is also the essential part of "hops-bitters" used in the brewing of beer.
The claimed invention involves the steps of forming a liquid mixture of the reactant humulone, a sufficient amount of certain metal salts (the cation of which is a member of Group IIa or IIb, or the Iron group of the periodic table, or cerium and manganese) said to be catalytic or complex-forming, and a "liquid medium." The desired isomerization takes place at an "elevated temperature," desirably at the boiling point of the system, and at a pH preferably between 4 and 9.
Claims 1 and 13 are illustrative of the invention:
The examiner rejected all of the claims under 35 U.S.C. § 102 as unpatentable in view of Worden, U.S. Patent No. 3,923,897, filed April 2, 1973. Worden discloses a similar process but in the main was utilized for its disclosure of Todd (Belgian patent No. 782,900 or U.S. Patent No. 4,002,683). Todd is admitted by all parties to be anticipatory of the claims (if the grandparent lacks § 112 description) especially in view of its discussion of the British equivalent to the grandparent application of this case.
The ultimate issue in this case is whether or not the grandparent application provides a written description of the claimed invention in the manner required by 35 U.S.C. § 112. If it does, the decision of the board with regard to § 102 is improper since the filing date of the grandparent is prior to the effective date of any of the cited references.
The bone of contention between the parties here is the meaning to be assigned the term "liquid medium." The basic argument stated by the PTO is that the term varies in breadth from the grandparent to this case. The appellant maintains that the term is a broad term throughout.
The examiner, in his Answer, specifically discussed the term and his view of the etymology of the term:
The grandparent application discussed the process throughout the disclosure referring to "liquid medium", "solvent", "dispersing agent", etc. However, the specific disclosure with respect to the solvent system used discloses, None of the examples in the grandparent application use other than aqueous systems consisting of water or water in addition to a water-miscible solvent such as ethanol. It is only with the filing of the continuation-in-part application, the parent of this application, now U.S. Patent No. 3,952,061, that appellants added examples drawn to the use of water-immiscible solvent systems. Appellants recognized the fact that there was no support in the original application to claim the use of a water-immiscible system which they are now trying to recoup in view of the Worden patent disclosure. It is interesting to note that in the parent application, appellants cancelled all claims directed to the use of water-immiscible solvent systems in view of a rejection over theresic own priority documents which had become available as prior art. * * * Up until Worden published his invention, no one had ever isomerized the alpha-acids of hops resins to iso-alpha acids in non-aqueous systems. It was Worden that sic discovered the great processing benefits that accrued to the use of such a system. The use of aqueous systems in place of non-aqueous systems prior to Worden was unknown. Therefore, appellants cannot allege that the use of non-aqueous systems was implied in their original disclosure since it was not specifically used, disclosed or known in the art at that time. Appellants readily admit that they added new matter in the continuation-in-part application but are attempting to imply that it was there all the time. If it were present in the parent (grandparent of this application), the new matter would not have been needed nor the additional added examples. Appellants sic position is believed to be in error since (1) there is no specific disclosure of the use of non-aqueous systems, the contrary being true, and (2) it cannot be inferred that the use of non-aqueous systems would have been readily apparent to one skilled in the art prior to Worden since the use of non-aqueous systems was the invention of Worden and not known in the art at that time.
The board affirmed the rejection and in doing so stated:
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Amgen Inc. v. Hoechst Marion Roussel, Inc.
...application is filed. See United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251 (Fed.Cir.1989); In re Koller, 613 F.2d 819, 824-25 (C.C.P.A.1980); see also In re Hogan, 559 F.2d 595, 606 (C.C.P.A.1977). Instead, section 112 only requires the Court to determine whether the......
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Enzo Biochem, Inc. v. Gen-Probe Inc.
...matter/written description rejections to original claims or other claims without priority problems. See, e.g., In re Koller, 613 F.2d 819, 823, 204 USPQ 702, 706 (CCPA 1980) ("[O]riginal claims constitute their own description."); In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397 (CCPA ......
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Amgen, Inc. v. Hoechst Marion Roussel, Inc.
...application is filed. United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251 (Fed.Cir.1989); Application of Koller, 613 F.2d 819, 824, 204 U.S.P.Q. 702 (1980). Thus, the critical inquiry is whether the specification clearly communicated to those skilled in the art what was......
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Amgen, Inc. v. Hoechst Marion Roussel, Inc.
...application is filed. See United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251 (Fed.Cir.1989); In re Koller, 613 F.2d 819, 824-25 (Fed.Cir. 1980); see also In re Hogan, 559 F.2d 595, 606 (Ct.Cust.Pat.App.1977). Instead, section 112 only requires the Court to determine wh......