Application of Wilke, Patent Appeal No. 6854.

• Decision Date: 13 February 1963
• Docket Number: Patent Appeal No. 6854.
• Parties: Application of Gunther WILKE and Werner Pfohl.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

50 CCPA 964, 314 F.2d 558 (1963)

Application of Gunther WILKE and Werner Pfohl.

Patent Appeal No. 6854.

United States Court of Customs and Patent Appeals.

February 13, 1963.

Burgess, Dinklage & Sprung, New York City (Arnold Sprung, New York City, of counsel), for appellants.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN and SMITH, Judges, and Associate Judge JOSEPH R. JACKSON, Retired.

SMITH, Judge.

The Patent Office Board of Appeals affirmed the examiner's rejection of twelve claims, numbered 18 through 27, inclusive, 36 and 37,¹ of appellants' patent application² entitled "Carboxylic Acid Anhydrides, Carboxylic Acids and Carboxylic Acid Esters of the Cyclododecane Series, and A Process For Their Production."

Of the remaining claims on appeal, the invention is claimed in claims numbered 18 through 27, inclusive, in terms of a process for producing novel reaction products from maleic acid anhydride and the specified cyclohydrocarbon. Claim 18, considered illustrative by the board, is the generic claim upon which the other claims in this series depend. Claim 36 claims the invention in terms of a product embodying any one of four carboxylic acid anhydrides defined by structural formulae which are placed in a Markush group.

Appealed claims 18 and 36 are as follows:

"18. A process comprising reacting at an elevated temperature from 1-4 molecules of maleic acid anhydride with one molecule of a triole-fine which is a member selected from the group consisting of cyclododecatri-(1,5,9)-ene and trivinyl cyclohexane and recovering the reaction product thereby formed.

"36. A member selected from the group of carboxylic acid anhydrides having the following general formulae:

The specification states that the novel compounds, carboxylic acid anhydrides, carboxylic acids and the carboxylic acid esters of the cyclododecane series (whose structure is not known with certainty), are obtained when a cyclododecatri-(1,5,9)-ene or a trivinyl cyclohexane are reacted with maleic acid anhydride. The reaction products so obtained are in the form of the anhydrides which are convertible into carboxylic acids by saponification, or into esters by esterification. The properties of the products are said to depend upon the number of acid groups present, which can vary from 2 to 6 or 8 and on the constitution of the alcohols used for esterification. As indicated by claim 36, the reaction products can vary from a 1:1 addition product to a 1:4 addition product of a cyclododecatri-(1,5,9)-ene or a trivinyl cyclohexane and a maleic acid anhydride.

In carrying out the disclosed process for making such a product, temperatures of from 150°C to 250°C may be used, with or without an inert solvent. Variation in reaction time produces different reaction products. Seven specific examples are described, in which the reaction products are said to be resinous or viscous liquids. Despite this fact, appellants here claim the invention in terms of both product and process.

The issue here has been unnecessarily confused by the statement of the grounds of rejection in the examiner's answer and the affirmance of this rejection by the board without clarification as to the precise reason for the rejection. The rejection as stated in the examiner's answer is as follows:

"All of the claims stand finally rejected as being based on an insufficient disclosure with respect to utility and failing to comply with 35 U.S.C. 112."Emphasis added.

The board in its opinion treats the rejection:

"* * * as based upon an insufficient disclosure of utility, i. e., a disclosure of how to use the products as required by 35 U.S.C. 112."

Appellants, in their brief, apparently agree with the board that:

"The claims before this Court were finally rejected by the Primary Examiner as being based upon an insufficient disclosure of utility, i. e. a disclosure of how to use the products as required by 35 U.S.C. 112 and this rejection was affirmed by the Board of Appeals. * * *"

"The sole issue involved herein is, therefore, whether the specification as filed contains a written description indicating a use for the invention sufficient to meet the requirements of 35 U.S.C. 112."

The solicitor, however, here takes a different view as to the meaning of the examiner's rejection and the issues presented by it. This view as stated in the solicitor's brief is as follows:

"Though the decision of the Board of Appeals paraphrases this rejection as one based upon an insufficient "disclosure of how to use the products as required by 35 USC 112" * * *, it is implicit in the Board\'s affirmance of the decision of the examiner and the reliance upon the quotation from In re Bremner et al., 37 CCPA 1032, 182 F.2d 216 * *, that the examiner\'s rejection raises a question involving 35 USC 101 as well as 35 USC 112. Hence, appellants\' statement that "no rejection under 35 USC 101 has been entered so that there is no question of usefulness involved herein" * * * is believed to be incorrect. It is submitted that the reasonable construction of the sentence quoted above from the examiner\'s answer is that the use of the conjunction "and" between the phrases "an insufficient disclosure with respect to utility" and "failing to comply with 35 USC 112" is that two distinct reasons are set forth, one being based upon section 101 (by implication) and the other, upon section 112 (expressly). * * *" Emphasis added.

A reasonable compliance with 35 U.S.C. § 132 and Patent Office Rule 104 should have resulted in such a statement of the ground of rejection that no basis could here exist for such a divergence of views. This divergence presents a separate ancillary issue which requires us to initially interpret the rejection before determining the principal issue presented for decision. We do this despite what seems to us to be the clear intent of 35 U.S.C. § 132 that the examiner should so state the rejection that there is no ambiguity as to the grounds therefor. Confusion as to the precise statutory ground of rejection such as is here present was also present in In re Nelson and Shabica, 280 F.2d 172, 47 CCPA 1031, 1033. Here, as there, the confusion appears to have arisen from a failure of the examiner to separate the so-called "utility" requirement of 35 U.S.C. § 101 from the "how to use" requirement of 35 U.S.C. § 112. Despite the present effort of the solicitor to bring 35 U.S.C. § 101 into this appeal, we agree with the board that the rejection of the appealed claims is based solely on appellants' failure to disclose their invention as required by 35 U.S.C. § 112.

Before a determination can be made as to the sufficiency of a disclosure under 35 U.S.C. § 112, it is necessary to determine what is claimed as the invention in the rejected claims.

As previously stated, the rejected claims are of two types. Claim 36 is directed to allegedly novel products while claims 18-27, inclusive, are drawn to "a process". 35 U.S.C. § 112 requires that the specification shall contain not only a written description of "the invention" but also "of the manner and process of making and using it." This requires appellants, because their invention relates to both process and product, to describe in writing not only the manner of using the process but also to disclose the manner of using the product before the statutory prerequisites to patentability are met. That is to say, where "the invention" claimed is a process, the requirements of 35 U.S.C. § 112 may be met by a written description of the manner of using the claimed process. However, such a description of the manner of using the process may not be a sufficient compliance with 35 U.S.C. § 112 where "the invention" claimed is a product.

We shall now proceed to a consideration of the written description found in appellants' specification, and analyze the appealed claims to determine, in the light of the foregoing observations, to what extent appellants have complied with 35 U.S.C. § 112.

Appellants rely upon two statements in their specification to provide the disclosures required by 35 U.S.C. § 112. These statements are as follows:

"* * * The addition products with more than 1 molecule of maleic acid anhydride, and more especially those with 3 molecules of maleic acid anhydride, have an interesting spider-like structure and on esterification, give polycarboxylic acid esters which have very valuable properties as plasticizers. * * *

* * * * * *

"* * * This can be particularly advantageous if the products produced according to the process of the invention are reacted with other suitable substances, for example for the purpose of manufacturing synthetic resins, because in that event additional opportunities for varying the properties of the synthetic resin arise from the presence of the double bonds. * * *"

In determining the sufficiency of these disclosures, we shall take up and discuss separately (1) the product claim, 36, and (2) the process claims 18-27, inclusive.

(1) Product Claim 36

We observe that this claim is directed to a Markush grouping of four carboxylic acid anhydrides, each of which is represented by a structural formula. The claim appears to set out "the subject matter which the applicant regards as his invention" as required by the second paragraph of 35 U.S.C. § 112. The issue presented, however, is whether the claim as drawn is supported by a "written description of the invention," which tells the "manner and process of * * * using it" and which sets forth "the best mode contemplated by the inventor of carrying out his invention." Appellants to support their position have pointed to portions of the specification which disclose reactions to produce "synthetic resins" as well as use of the reaction products in the formation of "plasticizers." They point particularly to Example 7 in the specification which discloses how to esterify...