Application of Armbruster

• Decision Date: 27 March 1975
• Docket Number: Patent Appeal No. 75-514.
• Citation: 512 F.2d 676
• Parties: Application of Frederick C. ARMBRUSTER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

512 F.2d 676

Application of Frederick C. ARMBRUSTER.

Patent Appeal No. 75-514.

United States Court of Customs and Patent Appeals.

March 27, 1975.

Keith V. Rockey, Chicago, Ill., Albert P. Halluin, attys. of record, for appellant. Frank E. Robbins, CPC International Inc., Englewood, Cliffs, New Jersey, of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.

MILLER, Judge.

This appeal is from a decision of the Patent and Trademark Office Board of Appeals, affirming the rejection of claims 45-51 and 53-55 under 35 U.S.C. § 112, first paragraph, in application serial No. 327,335, filed January 29, 1973, for reissue of patent No. 3,560,343, issued February 2, 1971, for "Low D.E. Starch Conversion Products." Claims 1-9 and 32-44 have been allowed, and claim 52 has been indicated allowable if rewritten in independent form. We reverse.

THE INVENTION

Sugars, such as dextrose, may be obtained from starches by breaking up large starch molecules through acid and/or enzymatic hydrolysis. Products of such hydrolysis are known as hydrolysates. The extent of hydrolysis is measured by the parameter D.E.—dextrose equivalent, calculated as dextrose and based on the total dry substance. A low D.E. value means little hydrolysis (breakup) has occurred. Appellant's invention involves a particular process for producing a low D.E. starch hydrolysate in the range of about 10 to about 25; the contested step under 35 U.S.C. § 112 involves initial acid hydrolysis of the starch "to a D.E. less than about 15."¹ Claim 45 is illustrative (emphasis supplied):

A process for producing a haze-free low D.E. starch hydrolysate which comprises:

1) treating a starch-water slurry with an acid above the gelatinization temperature of the starch to solubilize and hydrolyze the starch to a D.E. less than about 15,

2) treating the acid hydrolyzed starch with bacterial alpha-amylase to increase the D.E. by at least about 5 and to obtain a starch hydrolysate product having a D.E. in the range of from about 10 to about 25,

3) stopping the conversion action of the bacterial alpha-amylase, and

4) recovering the hydrolysate so produced.

"Haze-free" refers to the absence of high molecular weight starch fragments which have reassociated to form large, relatively insoluble aggregates adversely affecting optical clarity.

OPINION

The only issue presented for review is whether appellant's specification satisfies the how to make requirement of 35 U.S.C. § 112, first paragraph, with regard to the claimed limitation that the D.E. after the initial acid hydrolysis is "less than about 15." Stated otherwise, is the scope of enablement provided one of ordinary skill in the art by the disclosure commensurate with the scope of protection sought by the claims? In re Geerdes, 491 F.2d 1260 (Cust. & Pat.App. 1974); In re Cescon, 474 F.2d 1331 (Cust. & Pat.App.1973); In re Moore, 439 F.2d 1232, 58 CCPA 1042 (1971). Although appellant's specification describes the invention as broadly as it is claimed, thereby eliminating any issue concerning the description requirement, a specification which "describes" does not necessarily also "enable" one skilled in the art to make or use the claimed invention. See In re Mayhew, 481 F.2d 1373 (Cust. & Pat.App.1973). However, this court has made it clear that the Patent and Trademark Office must substantiate its rejection for lack of enablement with reasons. Worth repeating is the following statement from In re Marzocchi, 439 F.2d 220, 58 CCPA 1069 (1971):

The only relevant concern of the Patent Office under these circumstances should be over the truth of any such assertion. The first paragraph of § 112 requires nothing more than objective enablement. How such a teaching is set forth, either by the use of illustrative examples or by broad terminology, is of no importance.

As a matter of Patent Office practice, then, a specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. Assuming that sufficient reason for such doubt does exist, a rejection for failure to teach how to make and/or use will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the teaching contained in the specification is truly enabling.

. . . it is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement. Otherwise, there would be no need for the applicant to go to the trouble and expense of supporting his presumptively accurate disclosure. Emphasis in original and footnote deleted.

Accord, In re Dinh-Nguyen, 492 F.2d 856 (Cust. & Pat.App.1974); In re Bowen, 492 F.2d 859 (Cust. & Pat.App.1974).

Section 112 does not require that a specification convince persons skilled in the art that the assertions therein are correct. In re Robins, 429 F.2d 452, 57 CCPA 1321 (1970).

The following precedents are analogous to the present case and demonstrate the error in the position of the board. In re Anderson, 471 F.2d 1237 (Cust. & Pat.App.1973), involved claims to a surgical dressing comprising a laminated dressing of a primary layer, which is readily soluble in plasma, and a secondary layer in face-adhering contact with the primary layer also soluble in plasma, but to a lesser extent. In response to the Patent Office's assertion that the major part of the specification was directed to a laminate in which the primary layer was hemostatic, the court said:

It is quite true that the major part of appellant's specification is a disclosure of a primary layer having hemostatic properties, but in determining what is disclosed we cannot restrict our consideration to the major part of the disclosure. Appellant is clearly entitled to have the whole of his disclosure considered. We have already adverted to the abstract and to original claim 1, both of which make clear that appellant did not regard his invention as limited to a hemostatic primary layer. His broad disclosures do not refer to the hemostatic property at all. Emphasis supplied.

The solicitor requests that we "rethink" Anderson with regard to the use of the abstract as part of the specification in dealing with rejections under 35 U.S.C. § 112, citing Rule 72(b), 37 CFR 1.72(b).² However, Rule 72(b) states that the purpose of the abstract is to enable the "Patent Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure emphasis supplied." While the rule indicates that the abstract should not be used for interpreting the scope of claims, nowhere does the rule state that the abstract is not part of the specification. Furthermore, we can see no distinction for purposes of 35 U.S.C. § 112 between the abstract and the claims as originally filed, which have always been considered part of the original disclosure. Accordingly, we adhere to our position in Anderson, supra, that the abstract is embraced by the word "specification" for the purposes of a rejection under 35 U.S.C. § 112, first paragraph.

In re Coleman, 472 F.2d 1062 (Cust. & Pat.App.1973) involved a flexible conduit comprising a suitable elastic adhesive material between the metal hose and a plastic jacket. The sole issue was enablement with respect to the nature of the adhesive material, described in the claims by certain properties. The specification provided a generic disclosure couched in terms of the properties recited in the claims and a more specific disclosure of the preferred adhesive materials described by reference to trademark and trade name designations. In reversing the Patent Office the court stated:

In reviewing the rejection before us, we have appropriately looked to the disclosure in its entirety and have arrived at a conclusion which is necessarily to some extent subjective. . . . we find ourselves confronted with no adequate justification for denying appellant patent protection of the scope sought.

The board's opinion focuses too narrowly on the listing of specific

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