In re Robins
Decision Date | 13 August 1970 |
Docket Number | Patent Appeal No. 8313. |
Citation | 429 F.2d 452,166 USPQ 552 |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Parties | Application of Janis ROBINS. |
Donald M. Sell, St. Paul, Minn. (Kinney, Alexander, Sell, Steldt & DeLaHunt), St. Paul, Minn., attorney of record for appellant; John H. Lewis, Jr., John F. Witherspoon (Stevens, Davis, Miller & Mosher), Arlington, Va., of counsel.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents, R. E. Martin, Washington, D. C., of counsel.
Before WORLEY, Chief Judge, and RICH, BALDWIN and LANE, Judges, and RICHARDSON, Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Patent Office Board of Appeals1 affirming the rejection of claims 19-28 of application serial No. 199,644, filed June 4, 1962, entitled "Urethane Elastomers."
The claims on appeal are directed to a process for producing solid, non-cellular urethane polymers and to the resulting product. Appellant has discovered that "ionizable, halogen-free monoorgano mercuric compounds" are especially useful for catalyzing reactions between compounds having at last one reactive isocyanate group (-NCO) and compounds having at least one reactive hydroxyl group (-OH) to produce a solid, noncellular polyurethane product. Appellant's contribution resides entirely in the catalyst used, the process being otherwise old. Referring to the catalysts useful in his process, appellant's brief states:
Appellant's brief also explains some of the advantages of the claimed process as follows:
Claims 19-26 are directed to the above-described process and claims 27 and 28 to the products of the processes of claims 23 and 25, respectively. Claims 19-21 and 27 are representative:
There are two prior art rejections under 35 U.S.C. §§ 102 and 103, and at least one rejection under 35 U.S.C. § 112. The latter rejection, which we consider first, was stated in the examiner's Answer as follows:
The board affirmed the examiner, stating in part:
We find the examiner's Answer to be singularly unclear as to the particular requirement or requirements of § 112 which were thought not to have been met.5 The first, second and last sentences we have quoted from the examiner's Answer (see our emphasis) suggest that the specification was thought to be deficient (§ 112, first paragraph6) in some unstated respect. From the remainder of the examiner's remarks, however, it appears that he could not ascertain "what compounds appellant intends to include within the scope of the claims," which amounts to a contention that the claims are indefinite (§ 112, second paragraph7). The board contributes to our uncertainty by first "agreeing" with the examiner that "the claims fail to comply with 35 U.S.C. 112" (second paragraph? — emphasis ours) and then purportedly supporting this conclusion with observations about the immensity of the field of organic chemistry and the unpredictability of catalytic action . From the board's second decision responding to a Request for Reconsideration, it is apparent that a § 101 rejection was not intended. There the board stated with respect to appellant's acknowledgment that "some chemist might find an inoperable organo-substituent":
Neither the Examiner\'s holding nor our decision was on this basis, but rather they were based on the lack of reasonable support for the immense breadth of the claim terminology. Emphasis ours.
If the examiner and/or the board intended a rejection under the first paragraph of § 112, it must be reversed inasmuch as the specification contains a statement...
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...of representative compounds may provide an implicit description upon which to base generic claim language.’ ") (quoting In re Robins, 429 F.2d 452, 456–57 (C.C.P.A. 1970) ). The identification of a large number of representative compounds is one way to meet the written description requireme......
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...one way of teaching how to make and/or how to use the claimed invention, thus satisfying that aspect of § 112." Application of Robins, 57 C.C.P.A. 1321, 429 F.2d 452, 457 (1970); but see Soitec, 81 Fed.Appx. at 738 ("[c]onsidering the unpredictability of the art, the lack of direction and g......
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Regents of the University of California v. Eli Lilly & Co.
... ... at 502-03, 190 USPQ at 218 (deciding that applicants "are not required to disclose every species encompassed by their claims even in an unpredictable art" and that the disclosure of forty working examples sufficiently described subject matter of claims directed to a generic process); In re Robins, 429 F.2d 452, 456-57, 166 USPQ 552, 555 (Cust. & Pat.App.1970) ("Mention of representative compounds encompassed by generic claim language clearly is not required by § 112 or any other provision of the statute. But, where no explicit description of a generic invention is to be found in the ... ...
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Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., s. 90-1273
...a written description of a broadly claimed invention without describing all species that claim encompasses."); In re Robins, 429 F.2d 452, 456-57, 166 USPQ 552, 555 (CCPA 1970) ("[R]epresentative samples are not required by the statute and are not an end in themselves."). Here, however, des......
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The CCPA's Lasting Impact On U.S. Patent Law ' An Examination Of CCPA Enablement Decisions
...considered when making patent prosecution and litigation decisions that rest on the enablement requirement.1 Case Summaries In re Robins, 429 F.2d 452 (CCPA In In re Robins, the patent applicant filed an appeal from a decision by the Patent Office Board of Appeals ("the Board") affirming a ......
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The Rosetta Stone for the doctrine of means-plus-function patent claims.
...Cir. 1983); In re Wakefield, 422 F.2d 897, 904 (C.C.P.A. 1970). The breadth of a claim is not related to indefiniteness. See In re Robins, 429 F.2d 452, 458 (C.C.P.A. 1970) ("Breadth is not indefiniteness") (citing In re Gardner, 427 F.2d 786, 788 (C.C.P.A. (250.) In re Borkowski, 422 F.2d ......