Ziegler, In re, 91-1430

• Decision Date: 21 April 1993
• Docket Number: No. 91-1430,91-1430
• Citation: 26 USPQ2d 1600,992 F.2d 1197
• Parties: In re Karl ZIEGLER and Heinz Martin.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1197

992 F.2d 1197

26 U.S.P.Q.2d 1600

In re Karl ZIEGLER and Heinz Martin.

No. 91-1430.

United States Court of Appeals Federal Circuit.

April 21, 1993.

Rehearing Denied; Suggestion for

Rehearing In Banc Declined

June 29, 1993.

Arnold Sprung, Sprung, Horn, Kramer & Woods, Tarrytown, NY, argued for appellants. With him on the brief were Nathaniel D. Kramer and Alan J. Grant.

Fred E. McKelvey, Sol., Arlington, VA, argued for appellee. With him on the brief was Adriene B. Lepiane.

Paul E. Crawford and George Pazuniak, Connolly, Bove, Lodge & Hutz, Wilmington, DE, were on the brief, for amicus curiae, Aristech Chemical Corp.

Kenneth E. Madsen, Kenyon & Kenyon, New York City, was on the brief, for amicus curiae, Himont, Inc. Also on the brief was James Galbraith, of counsel.

Before NIES, Chief Judge, ARCHER, Circuit Judge, and COHN, District Judge. ¹

ARCHER, Circuit Judge.

Karl Ziegler and Heinz Martin (together Ziegler) appeal from the June 10, 1991 decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board), sustaining the rejection of claims 37 and 38, the only claims remaining in United States patent application Serial No. 07/108,524, filed October 15, 1987 as a continuation of United States patent application Serial No. 03/514,068. We affirm.

I.

This case concerns polypropylene, a polymer of propylene molecules. ² On August 3, 1954, Ziegler filed in Germany a patent application, Z 4348 IVc/39c (the German application), entitled "Process for polymerization and copolymerization of olefines." The application described four polymer products produced by the claimed process: polypropylene, poly-n-butylene, and two ethylene-propylene interpolymers.

On June 8, 1955, Ziegler then filed in the United States patent application Serial No. 03/514,068, the parent of the application here at issue. Ziegler claimed an August 3, 1954 priority date under 35 U.S.C. § 119 based on the German application. Because of the pendency of an interference, the PTO suspended prosecution of the parent application for a number of years. The PTO issued an office action on May 22, 1985, in which it rejected the claims then pending. The final rejection of the sole remaining claim 66 was considered and sustained by the board, and by this court in In re Ziegler, 833 F.2d 1024 (Fed.Cir.1987) (unpublished). ³

On October 15, 1987, Ziegler filed the application here at issue, Serial No. 07/108,524, as a continuation of the parent application. Former claim 66 was amended and presented in this application as claim 37; Ziegler later added a claim 38. Claims 37 and 38 are the sole remaining claims in the application and read as follows:

37. Solid, plastic polypropylene characterized by being able to be pressed into flexible foils and sheets at temperatures above about 140? C and formed by the polymerization of propylene, using a catalyst formed from an aluminum alkyl and a titanium halide.

38. Solid, plastic polypropylene characterized by being able to be pressed into flexible foils and sheets at a temperature of about 140? C and formed by the polymerization of propylene, using a catalyst formed from an aluminum alkyl and a titanium halide.

The examiner finally rejected claims 37 and 38 on several grounds, three of which were sustained by the board. The board first sustained the examiner's rejection of claims 37 and 38 under 35 U.S.C. § 102(g), ⁴ finding that one Baxter had previously invented the claimed polypropylene in experimental Run 4460-41. ⁵

The board also sustained the examiner's rejection of claims 37 and 38 under 35 U.S.C. § 102(e) in view of United States Patent No. 4,371,680 to Baxter et al. (Baxter '680). Baxter '680 was filed on August 19, 1954, after the August 3, 1954 filing date of Ziegler's German application. However, the examiner concluded that because the disclosure of the German application failed to satisfy the requirements of 35 U.S.C. § 112, Ziegler could not claim the benefit of its filing date under 35 U.S.C. § 119. Therefore Baxter '680 anticipated claims 37 and 38 under section 102(e). The examiner found the German application deficient for two reasons: first, the German application failed to disclose a practical utility for the claimed polypropylene; and second, the German application did not contain a written description of the claimed subject matter in that the claim language regarding being able to be pressed at temperatures "above about 140? C" for claim 37 and "about 140? C" for claim 38 was broader than the German application's disclosure that the polypropylene could be pressed "at 140? C." In his answer on appeal before the board, the examiner entered a new ground of rejection, of claim 37 under 35 U.S.C. § 112, first paragraph, on the ground that the specification of the United States application did not contain an adequate written description to support the claim limitation being able to be pressed at temperatures "above about 140? C."

The board sustained the following rejections: (1) claims 37 and 38 under 35 U.S.C. § 102(g) in view of Baxter's Run 4460-41; (2) claims 37 and 38 under 35 U.S.C. § 102(e) in view of Baxter '680, because the German application failed for two reasons to satisfy 35 U.S.C. § 112; and (3) claim 37 under 35 U.S.C. § 112 for inadequate written description. ⁶

After the board's decision, Ziegler requested reconsideration to allow entry of an amendment canceling claim 37 and amending claim 38 to remove the term "about." The board refused, and this appeal followed.

II.

The board sustained the examiner's rejection of claims 37 and 38 under 35 U.S.C. § 102(e) ⁷ as anticipated by Baxter '680 because Ziegler was not entitled to claim the benefit of the filing date of the German application under 35 U.S.C. § 119. ⁸ It is undisputed that if Ziegler cannot claim the benefit of the German filing date to antedate Baxter '680, Baxter '680 anticipates and makes unpatentable under 35 U.S.C. § 102(e) the subject matter claimed in claims 37 and 38. Therefore, the only issue relating to the section 102(e) rejection is whether the examiner and the board correctly concluded that Ziegler was not entitled to the priority date of the German application because that application failed to disclose a practical utility for, and because it failed to contain a written description of, the claimed polypropylene.

A foreign patent application must meet the requirements of 35 U.S.C. § 112, first paragraph, in order for a later filed United States application to be entitled to the benefit of the foreign filing date under 35 U.S.C. § 119. Yasuko Kawai v. Metlesics, 480 F.2d 880, 885-89, 178 USPQ 158, 162-65 (CCPA 1973); Anderson v. Natta, 480 F.2d 1392, 1399, 178 USPQ 458, 462 (CCPA 1973). The applicant for a United States patent bears the burden of establishing its entitlement to the filing date of a previously filed application. Wagoner v. Barger, 463 F.2d 1377, 1380, 175 USPQ 85, 87 (CCPA 1972).

The first issue thus is whether the determination that Ziegler did not establish that the German application disclosed a practical utility for the polypropylene was clearly erroneous. We assume that the conclusion that the German application lacked a sufficient showing of utility was based on the "how to use" prong of the enablement requirement of 35 U.S.C. § 112, first paragraph. That paragraph provides in pertinent part:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same....

35 U.S.C. § 112 (emphases added). Whether disclosure is enabling is a question of law. Raytheon Co. v. Roper Corp., 724 F.2d 951, 960 n. 6, 220 USPQ 592, 599 n. 6 (Fed.Cir.1983). The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. § 101 that the specification disclose as a matter of fact a practical utility for the invention. See Cross v. Iizuka, 753 F.2d 1040, 1042-44, 224 USPQ 739, 741-42 (Fed.Cir.1985) (a foreign application does not satisfy section 112 if it fails to disclose a practical utility for the invention within section 101); In re Fouche, 439 F.2d 1237, 1243, 169 USPQ 429, 434 (CCPA 1971) (if "compositions are in fact useless, [applicant's] specification cannot have taught how to use them."). If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112. The benefit of the foreign application's filing date cannot then be obtained under 35 U.S.C. § 119.

"It is axiomatic that an invention cannot be considered 'useful', in the sense that a patent can be granted on it, unless substantial or practical utility for the invention has been discovered and disclosed where such utility would not be obvious." Cross v. Iizuka, 753 F.2d at 1044, 224 USPQ at 742. In the context of a constructive reduction to practice, "practical utility for the invention is determined by reference to, and a factual analysis of, the disclosures of the application." Id. In order to resolve the issue of utility in this case, we must therefore consider two questions: "(1) What utility is disclosed by the [foreign] priority application? [and] (2) Does this stated utility comply with the 'practical utility' requirement of 35 U.S.C. § 101, as delimited by prior decisions of the judiciary? " Id. (emphasis added).

Ziegler relies solely on the following assertions in the German application in arguing that the application disclosed a specific and a substantial or practical utility for polypropylene:

[In this application] catalysts have been disclosed with which ethylene can be polymerized ... to yield plastic-like polyethylenes of high value.

It has now been found that with...