Application of Breslow, Appeal No. 79-602.

• Citation: 616 F.2d 516
• Decision Date: 28 February 1980
• Docket Number: Appeal No. 79-602.
• Parties: In the Matter of the Application of David S. BRESLOW.
• Court: United States Court of Customs and Patent Appeals

616 F.2d 516

In the Matter of the Application of David S. BRESLOW.

Appeal No. 79-602.

United States Court of Customs and Patent Appeals.

February 28, 1980.

Marion C. Staves, Wilmington, Del., attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents and Trademarks; Fred E. McKelvey, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER and MALETZ,^* Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejections of claims 2, 3, and 8 in appellant's application, serial No. 646,309,¹ filed January 2, 1976, for "Nitrile Imines," under 35 U.S.C. § 101 for failure to define a statutory class of invention and also under 35 U.S.C. § 112, first paragraph, for not disclosing how to prepare and isolate the claimed compounds. We reverse.

The Invention

The new compounds claimed herein, polyfunctional nitrile imines, are one aspect of a broader invention which is described in U.S. Patent No. 3,418,285, which issued on a parent application, as follows: "This invention relates to new cross-linking agents, to cross-linking unsaturated polymers therewith, and to the cross-linked products so produced." The instant application explains that generally any type of unsaturated polymer, containing ethylenic unsaturation wherein there is at least one hydrogen radical attached to at least one of the carbon atoms of the double bond, can be cross-linked with the polyfunctional nitrile imines and that the resulting cross-linked polymers are hard, tough rubbers, substantially insoluble in water and hydrocarbon solvents with improved tensile properties useful in various rubber applications.

The following quotations from appellant's specification are particularly relevant to the issue before us:

The polyfunctional nitrile imines of this invention are relatively unstable compounds, and the primary modes of cross-linking unsaturated polymers with these imines involves their formation in situ in a polymer mass from their closely related but more stable hydrogen chloride salts * * * usually accomplished by contacting the hydrazide chloride with an alkaline material. * * *

* * * * * *

The cross-linking is carried out by contacting the unsaturated polymer and a minor amount of the polyfunctional nitrile imine cross-linking agent for a time sufficient for the desired degree of cross-linking to occur. This uniform contacting is preferably achieved by uniformly mixing the polymer and the hydrogen chloride salt of the polyfunctional nitrile imine, and treating that mixture with an alkaline material, thereby generating the nitrile imine in situ in the polymer mass.

* * * * * *

The uniform mixing * * * can be carried out by milling these ingredients on a conventional rubber mill, by dissolving the hydrogen chloride salt or the tetrazole precursor in a solvent solution of the polymer, or by any of other numerous methods, which will be readily apparent to those skilled in the art. This uniform contacting will result in the nitrile imine cross-linking agent being uniformly distributed throughout the polymer mass upon its in situ generation, so that uniform cross-linking can be achieved.

Thus, the claimed compounds are simultaneously generated and put to use. The three product claims on appeal are in Markush form, covering a large number of nitrile imines, the novelty, utility, and unobviousness of which have not been questioned. In view of the nature of the rejections, it will not be necessary to consider the claims in detail and quoting them would serve no useful purpose.

The Rejection

The examiner relied on no prior art references. He held, first, that the claimed compounds do not fall within any statutory category of invention named in 35 U.S.C. § 101.² For support, he relied on three admissions which appeared in the file of the parent application (serial No. 453,664), as follows: (1) "It is true that the compounds are transitory intermediates"; (2) "they are so reactive that they will react with each other if there is no other coreactant available"; and (3) "it is also true that applicant has not isolated the compounds." On the basis of these admissions, the examiner said in his Answer:

A "transitory intermediate" is not a composition of matter provided for under the normal interpretation of this statute. * * *.

* * * * * *

* * * as noted above (and below) this is a situation where a "transitory" intermediate, which would not and could not be readily isolated, is being claimed and one of ordinary skill in the art is not presented with an enabling disclosure (for more on "enablement" see below) for attaining this compounds, sic per se, claimed at bar.

Decisions: While no direct precedential decisions have been found that are specifically in point on this 35 U.S.C. § 101 issue the following decisions might be of interest: Ex parte Howard, 1924 C.D. 75 (item No. 1 on page 76) and In re Stubbs, 1932 C.D. 466 (item No. 1 on page 467).

The examiner then made a second rejection of the appealed claims under 35 U.S.C. § 112, first paragraph, saying:

The first paragraph is pertinent as this disclosure provides no "enabling" data to teach one of ordinary skill in the art how to prepare and isolate the compounds, per se, presently being claimed. Derivatives yes, but actual isolatable compounds, no.

Put another way, it is clear that as appellant is claiming specific compounds it is appellant's duty (to fulfill the patent contract granted by the government of the United States)³ to give sufficient teachings to enable one of ordinary skill in the art to produce (or reproduce) and isolate such claimed compounds, per se, not derivatives thereof. As urged by the Examiner, supra, appellant has not done so. If it would be obvious to the ordinary skill in the art how to isolate such claimed compounds then no problem exists as such would be patentable * * * but herein no such enablement is proffered nor is (are) any reference(s) cited to prove such isolation would be within the ordinary skill of the art. Emphasis ours.

Another argument made by the examiner was that there was no indication, and certainly no proof, that the claimed compounds "are even formed." The board disagreed with him on this point and expressly held to the contrary, so that question is not before us. The board held that, on the evidence produced by appellant, it is "reasonable to assume that the claimed compounds, in fact, are formed and do exist in the system disclosed by appellant in which they are specifically and explicitly taught to be produced." Having so held, the board's opinion continues as follows:

But we are, nevertheless, constrained to affirm the Examiner's rejection of the instant claims. An interesting legal question is presented by this case for which, as noted by the Examiner, no direct precedential decisions appear to exist. However, similar factual situations prevailed in Ex parte Howard, 1924 CD 75, wherein a free-falling drop or gob of molten glass which exists only while falling to the mold was claimed, and in In re Stubbs, 58 F.2d 447, 19 CCPA 1216 423 OG 6, 1932 CD 466, where the subject matter at issue was a paving for streets comprised of a partly-cured concrete. In both of these cases the deciding tribunals in Howard, Assistant Commissioner of Patents Fenning and in Stubbs this court held that the claimed products did not fall within one of the statutory classes which may be patented inasmuch as they were transitory and ephemeral in nature. Similarly here, the claimed compounds are transitory intermediates which appellant has not been able to isolate and which apparently are not capable of existence, as such, in isolated form. See Paper No. 5, page 3 of the parent file, Serial No. 453,664, pertinent portions of which have been reproduced by the Examiner in his Answer. Accordingly, we believe that the claimed compounds which admittedly exist only as transitory intermediates are not within the scope of the four categories of inventions or discoveries set forth in 35 USC U.S.C. § 101 which may be patented.

Further, we interpret the enablement clause of the first paragraph of 35 USC U.S.C. § 112 as requiring that the claimed invention, i. e. the claimed compounds per se which constitute the invention at issue, must be taught in a manner such that the artisan will be in possession of the claimed invention. Appellant, however, does not disclose how this may be achieved nor, in fact, does he even assert that such may necessarily be possible. He only postulates that using very sophisticated techniques someone may one day possibly isolate and analyze the instant compounds. It is urged by him that investigations of this nature are unnecessary for the purpose of this invention.

We disagree. The invention at bar, as defined by the appealed claims, is the compounds, per se, and as long as appellant has failed to give directions to one skilled in the art which would put him into possession of the invention so claimed, he has not satisfied the enablement clause of 35 USC U.S.C. § 112. This is not to say that we believe appellant must teach the art-skilled how to isolate the claimed compounds in pure form; but we do believe that appellant must enable one to obtain the compounds in a reasonably stable form. Emphasis in original.

The Issue

From the foregoing it is apparent that the board affirmed two distinct grounds of rejection: (1) lack of statutory subject matter under § 101 and (2) lack of an enabling disclosure in the specification under § 112. The matter has here been further simplified, however, by the PTO solicitor in his brief in this court. At the end of his brief he says:

It is the Commissioner's view that the § 112 rejection stands or falls with the § 101 rejection. If the unstable, non-isolatable, transitory intermediates claimed in claims 2, 3, and 8 are deemed by the Court to be a

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