In re Howarth

• Decision Date: 16 July 1981
• Docket Number: Appeal No. 81-512.
• Citation: 654 F.2d 103
• Parties: In re Thomas Trefor HOWARTH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

654 F.2d 103

In re Thomas Trefor HOWARTH.

Appeal No. 81-512.

United States Court of Customs and Patent Appeals.

July 16, 1981.

Jacobs & Jacobs, New York City, for appellant.

Joseph F. Nakamura and Harris A. Pitlick, Washington, D. C., for the Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER, and NIES, Judges.

NIES, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Appeals (board) sustaining the rejection of all claims of appellant's application Serial No. 620,564, filed October 8, 1975, under 35 U.S.C. § 112, first paragraph, for failure to disclose how to make or obtain the starting material requisite to the preparation of the claimed compounds. We affirm.

Background

This application involves various derivatives of clavulanic acid.¹ Preparation of the derivatives is disclosed but no method is given for making the starting material, clavulanic acid, per se, nor is a source named.

In response to the examiner's rejection of the claims under 35 U.S.C. § 112, first paragraph, as based on a non-enabling disclosure, appellant argued that the preparation of clavulanic acid was known in the art prior to his U.S. filing date. In support of this assertion appellant submitted copies of patent specifications which had been opened for inspection in Rhodesia, Panama and Luxembourg prior to this date and which disclosed the preparation of the starting material, together with pertinent official publications in Rhodesia and Panama announcing acceptance of the applications in which the disclosure is contained.

In Rhodesia the typewritten specification had been filed April 11, 1975, and accepted September 8, 1975. A copy of a page of the Official Patent and Trademark Journal dated September 24, 1975, also submitted by appellant, showed that as of that date the specification entitled "Antibiotics" was open to the public for inspection and copies thereof could be obtained.²

In Panama the specification had been filed May 21, 1975, and the patent granted October 2, 1975. A copy of a page of the Bulletin of Industrial Property dated June 16, 1975 (in Spanish), advertising acceptance of this application entitled "Antibioticos" was also submitted. This advertisement opened an opposition period of ninety days. Copies of the typewritten specification were obtainable at least as early as June 16, 1975.

In Luxembourg the specification had been filed April 18, 1975, and the patent granted August 20, 1975. The application was available for inspection and copies could be obtained after granting of the patent. Three international classification numbers appear on the copy of the specification which is entitled "Procede de preparation d'un antibiotique." There is nothing in the record showing how and when the public was apprised of the granting of the patent in Luxembourg.

Appellant is named as a co-inventor in the applications in Panama and Luxembourg, and Beecham Group Limited, the real party in interest here, is the assignee of all three.

OPINION

35 U.S.C. § 112, first paragraph, requires that the specification in an application for a patent "contain a written description of the invention, and of the manner and process of making ... it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make ... the same ...."

There is no question here that access to or knowledge of preparation of the starting material, clavulanic acid, is essential to making the claimed derivatives of clavulanic acid. There is also no question that if a patent were granted on the invention as described in the present application, a person skilled in the art would find no information therein enabling him to prepare the clavulanic acid or directing him to reference materials containing such information.

Finally, there is no dispute that the necessary information could have been obtained from documents available to the public, prior to the filing date of the subject application, in the Patent Offices of Rhodesia, Panama and Luxembourg. Apart from these documents, appellant does not assert that the preparation of clavulanic acid is part of the knowledge of the art.

Appellant makes essentially two arguments: first, that those skilled in the art are conclusively presumed to have knowledge of all information in all U.S. and foreign patents from the date when copies are made available to the public, and, second, that the particular information was accessible because public notices concerning the subject patents were published in Rhodesia and Panama and because international classifications were assigned in Luxembourg.

The solicitor does not admit that the submitted documents evidence that any "patents" had been granted prior to appellant's filing date.³ The thrust of the solicitor's argument, however, is that regardless of what the documents are called and regardless of the technical possibility of obtaining copies from the respective government offices, there is no evidence of actual dissemination to the public of the documents containing the specifications, nor is there any index, catalog or other customary research tool or even a descriptive title that would lead one of ordinary skill to the documents for information on the preparation of clavulanic acid. Therefore, the documents may not be relied on to supplement appellant's disclosure.

The starting point under § 112 is that a duty is imposed which must be met by an applicant. In exchange for the patent, he must enable others to practice his invention. An inventor need not, however, explain every detail since he is speaking to those skilled in the art. What is conventional knowledge will be read into the disclosure. Accordingly, an applicant's duty to tell all that is necessary to make or use varies greatly depending upon the art to which the invention pertains.

In In re Chilowsky, 43 CCPA 775, 780, 229 F.2d 457, 460, 108 USPQ 321, 324 (1956), this court stated:

It is well settled that the disclosure of an application embraces not only what is expressly set forth in words or drawings, but what would be understood by persons skilled in the art. As was said in Webster Loom Co. v. Higgins et al., 105 U.S. 580, 586 26 L.Ed. 1177, the applicant "may begin at the point where his invention begins, and describe what he has made that is new and what it replaces of the old. That which is common and well known is as if it were written out in the patent and delineated in the drawings." One of the issues in the present case relates to the scope and nature of the matters which may be sufficiently common and well known as to permit them to form an unwritten part of the disclosure of the application.

With respect to matters necessary for an enabling disclosure and which are not common or well known, an applicant may, in the interests of economy of time and space, incorporate certain types of documents by specific reference in his application to such source materials. After ruling that prior U.S. patents may be so incorporated, In re Stauber, 18 CCPA 774, 45 F.2d 661, 7 USPQ 258 (1930), this court...