In re Anderson

• Decision Date: 26 January 1973
• Docket Number: Patent Appeal No. 8837.
• Parties: Application of Robert J. ANDERSON.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

176 USPQ 331, 471 F.2d 1237 (1973)

Application of Robert J. ANDERSON.

Patent Appeal No. 8837.

United States Court of Customs and Patent Appeals.

January 26, 1973.

S. Augustus Demma, New York City, attorney of record, for appellant.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Raymond E. Martin, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.

RICH, Judge.

This appeal is from the Patent Office Board of Appeals decision affirming the rejection of claims 1-10, all claims of application serial No. 642,294, filed May 31, 1967, entitled "Wound Dressing." The application is stated to be a continuation-in-part of serial No. 337,709, filed January 8, 1964, which matured into patent No. 3,328,259, and of serial No. 782,515, filed December 23, 1958, now abandoned. We reverse in part and affirm in part.

The Invention

The invention described and claimed by appellant is a surgical dressing which is soluble in plasma and completely absorbable in the body and hence suitable for both external and internal use. It is intended to afford a substantial degree of containment against excess flow of plasma from a wound to which it is applied. Being absorbable, it becomes incorporated in the scab or eschar which forms over an external open lesion. The abstract forming part of the specification reads:

The invention comprises a laminated dressing for a wound comprising 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 than the primary layer.

Claim 1, which is the only independent claim and is an unamended original claim in this application and therefore, by elementary principles of patent law, to be considered as a part of the original disclosure,¹ reads (paragraphing supplied):

1. A laminated dressing for a wound comprising a laminated structure made up of two layers arranged face to face,

both layers being plasma-soluble,

one layer constituting a primary layer adapted to be applied directly to the wound, and being more readily soluble in plasma than the other layer,

the other layer constituting a secondary layer serving as a backing for said primary layer.

It is thus seen that the invention of claim 1 is an article of manufacture comprising a combination of elements. Since claims 2-10 all depend, directly or indirectly, from claim 1, they are likewise combination claims. We shall not discuss them here but in connection with our discussion of the various rejections pertaining to them. The primary issue is the patentability of claim 1, the parent and broadest claim. We find it was erroneously rejected.

The Rejections

The board did not altogether agree with the grounds of rejections as stated by the examiner, affirmed some, reversed some, and added some of its own, not designated as new rejections. Appellant has made no issue of the fact that some of the rejections originated with the board. The Patent Office Solicitor has presented an analysis showing that we have seven different rejections before us, five of them on the ground that claims are "broader than warranted by the disclosure" for one reason or another. A sixth is for indefiniteness and the seventh for new matter.

We agree with the solicitor's explanation of what the statutory bases of these rejections should have been stated to be, which he has made in the light of two cases we decided after the date of the examiner's Answer herein and so close to the board's decision that it certainly did not consider them, In re Borkowski, 422 F.2d 904, 57 CCPA 946 (1970), and In re Wakefield, 422 F.2d 897, 57 CCPA 959 (1970). See also In re Hammack, 427 F.2d 1378, 57 CCPA 1225 (1970). The solicitor's explanation, which differs in several respects from the reasons given by the examiner and affirmed by the board, reads:

It is apparent from the preceding analysis of the various grounds of rejection that all claims (grounds 1-5) have been rejected for failure to satisfy Section 112, paragraph 1, that claims 7, 9, and 10 have additionally been rejected for failure to satisfy Section 112, paragraph 2 (ground 6), and that claim 2 has additionally been rejected for failure to satisfy Section 132 (ground 7).

Further details as to these rejections will be given as we consider them. There is no rejection on prior art nor any prior art relied on.

OPINION

I

All claims except 4, 9, and 10² were rejected as "broader than warranted by the disclosure" in the use of the expression (in the third clause in claim 1 as set forth above) "a primary layer adapted to be applied directly to the wound, and being more readily soluble in plasma than the other layer."

In making this rejection, the examiner did not explain the basis of his assertion that the claims be so rejected are "broader than warranted by the disclosure." Challenged with having given no explanation, the only light he shed in his Answer was to say that "the above phrase was rejected on breadth," citing in justification In re Sus, 306 F.2d 494, 49 CCPA 1301 (1962), and In re Lund, 376 F.2d 982, 54 CCPA 1361 (1967). Of course, it was not the "phrase" the examiner was rejecting but the claim and we will assume that is what he meant. We find no support for the rejection in Sus. That case essentially involved the patentability of claims to a group of chemical compounds and to their uses claimed as processes of making printing plates. We found the claims to be not in compliance with § 112 because, as clearly stated at the end of the opinion, they did not conform to what the applicant described as his invention in the specification. The situation here is that the broad claims are of the same scope as the invention described. We also note that appellant relied on Sus below for our statement, to which we adhere, that:

The public purpose on which the patent law rests requires the granting of claims commensurate in scope with the invention disclosed. This requires as much the granting of broad claims on broad inventions as it does the granting of more specific claims on more specific inventions.

Lund was another case where the claims were for chemical compounds, useful as medicaments. It relied on Sus. We there said, "the invention claimed should be no broader than the invention set forth in the written description contained in the specification." We found that not to be the case. Here we find it is the case which is sufficient to distinguish Lund.

In affirming, the board presented an entirely different justification, as follows (emphasis ours):

The major part of appellant\'s specification is directed to a laminate in which the primary layer is hemostatic. Such a layer is exemplified by the disclosures of two specific ethers of cellulose. The prophetic paragraph in page 5 of the specification, however, has no support by way of exemplification and does not demonstrate or suggest to one skilled in this art how to use any other material in the laminate. There is no suggestion as to any other specific materials which may be employed. Thus the Examiner\'s rejection * * * is sustainable.

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. Additionally, the "prophetic" paragraph referred to by the board appears to be the one which reads:

Although the primary layer is described as being hemostatic, as far as certain aspects of the invention are concerned, it need not be so, as long as it is water-soluble or plasma-soluble, and can serve as a vehicle for medication, released upon dissolution in the plasma.

As we view it, the board's reason for agreeing that claim 1 is "broader than warranted by the disclosure" is not because the invention as disclosed is not of equal scope with claim 1 but because the claim is inclusive of a laminated dressing in which the primary layer is of non-hemostatic material and because there is (1) no "exemplification" of such a material and (2) no suggestion of "how to use" such a material in the laminate.

On the first point, the tacitly assumed need for exemplification, we do not regard § 112, first paragraph, as requiring a specific example of everything within the scope of a broad claim. In re Gay, 309 F.2d 769, 50 CCPA 725 (1962). There is no question raised as to the fact that there are specific examples of what appears to be the preferred embodiment and best mode contemplated by the applicant of carrying out his claimed invention; we are here dealing only with a possible alternative embodiment within the scope of the claims. What the Patent Office is here apparently attempting is to limit all claims to the specific examples, notwithstanding the clear disclosure of a broader invention. This it may not do. As was stated in American Anode, Inc. v. Lee-Tex Rubber Products Corp., 136 F.2d 581, 585 (7th Cir.1943):

There is no doubt that a patentee\'s invention may be broader than the particular embodiment shown in his specification. A patentee is not only entitled to narrow claims particularly directed to the preferred embodiment, but also to broad claims which define the invention without a reference to specific instrumentalities. Smith v. Snow, 294 U.S. 1 at pages 11 et seq. 55 S.Ct. 279, 79 L.Ed. 721. * * *.

We consider the board's first reason insufficient.

On the "how to use" point we simply disagree with the board. In its broad aspect, appellant's dressing is a very simple thing. It has two layers of...