Watson v. Bersworth, 13566.

• Decision Date: 09 January 1958
• Docket Number: No. 13566.,13566.
• Parties: Robert C. WATSON, Commissioner of Patents, Appellant, v. Frederick C. BERSWORTH and The Dow Chemical Company, Appellees.
• Court: U.S. Court of Appeals — District of Columbia Circuit

251 F.2d 898 (1958)

Robert C. WATSON, Commissioner of Patents, Appellant, v. Frederick C. BERSWORTH and The Dow Chemical Company, Appellees.

No. 13566.

United States Court of Appeals District of Columbia Circuit.

Argued March 22, 1957.

Decided January 9, 1958.

Petition for Rehearing Denied February 28, 1958.

Mr. Joseph Schimmel, Atty., United States Patent Office, with whom Mr. Clarence W. Moore, Solicitor, United States Patent Office, was on the brief, for appellant.

Mr. Thomas B. Graham, New York City, with whom Mr. Ellsworth H. Mosher, Washington, D. C., was on the brief, for appellees.

Before EDGERTON, Chief Judge, and BAZELON and DANAHER, Circuit Judges.

EDGERTON, Chief Judge.

This is a suit under 35 U.S.C. § 145, 66 Stat. 803, § 1, for a patent on certain claims of an application filed in the Patent Office in 1951. The Patent Office rejected the claims as anticipated by certain references, namely two patents issued in 1947. The District Court overruled the Patent Office and the Commissioner of Patents appeals.

In 1946 appellees filed an application, Serial No. 657,893, which became Patent No. 2,524,218. If the disclosure in that application would have supported claims like those now in suit, had they been made then, the doctrine of "continuity" gives these claims the benefit of the filing date of that application and so entitles them to priority over the references. The Patent Office tribunals ruled that the 1946 disclosure would not have supported claims like these. The District Court held the contrary.

The claims are for a chemical compound described by specific formula, and for the basic metal salts of this compound. The 1946 application did not disclose the specific formula of this compound. According to undisputed testimony in the District Court, a general formula disclosed by the 1946 application "encompassed within its scope * * * a large number", possibly thousands, of compounds, including the one now specifically claimed; "a small number of known, but many unknown" compounds; chemists can "derive" the specific formula now claimed, and many others, from the general formula; "You derive the compound now claimed by assigning certain values to the m variables set forth in the general formula" disclosed in 1946, but "there are many other compounds that would be derived in the same way * * *." A witness for appellees who testified, on direct examination, that the 1946 "formula, with the explanatory disclosure, specifically dictates the formula" now claimed, testified on cross-examination that "One is led to other compounds as well" and that he "had a definite goal in mind" when he picked a particular "substituent".¹

The difference between the Patent Office and the District Court, and the issue before us, is not factual. As the Commissioner of Patents says in his brief, "There is little, if any, disagreement as to the salient pertinent facts of this case." He does not deny that the appellees are entitled to a patent if their 1951 claims are entitled to priority over the 1947 references. The appellees do not contend that they are entitled to a patent if their claims are not entitled to priority over those references. The question is not whether an invention has been made. The question is whether the appellees are entitled to claim the invention. The answer turns on the relation between the words of the 1946 application and the words of the 1951 claims. And "the words of a patent or a patent application, like the words of specific claims therein, always raise a question of law for the court and may not be determined by the opinion of experts. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S.Ct. 9, 74 L.Ed. 147 * * *." Minnesota Mining & Mfg. Co. v. Carborundum Co., 3 Cir., 155 F.2d 746, 749. The 1946 disclosure would or would not have supported claims like the ones now made, according to whether such a general disclosure does or does not, in respect to such specific claims, meet the legal requirement that "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains * * * to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. § 112. (Emphasis added.) "This is a question of law, open to this court, precisely as it was open to the court below." Minnesota Mining case, supra. On this appeal the Patent Office does not question, and we do not question, any of the testimony of appellees' witnesses. But we answer the question of law in the negative.² As a matter of law, an applicant cannot "`include and claim a specific thing not originally described, merely because it comes within the scope of the genus before disclosed.'" In re Mraz, 36 App. D.C. 435, 438. An applicant "under the circumstances of this case, cannot preempt the entire field * * * by broadly teaching that useful results may be obtained by mixtures and combinations of a broad general group of materials without specifically naming such materials * * * or in some other manner pointing out his invention as is required by statute * * *." In re Collins, 75 F.2d 1000, 1002, 22 C.C.P.A., Patents, 1053. Minnesota Mining case, supra.

Reversed.

DANAHER, Circuit Judge (dissenting).

The philosophy permeating the majority opinion basically is one of nullification of the remedy provided by Congress, a result here reached (1) by according to the Patent Office the equivalent of a conclusive presumption of correctness; and (2) by holding that sufficiency of disclosure raises a question of law. Relegated to zero status is the District Court, with its findings, its conclusions, its memorandum opinion and its judgment. Judge Wilkin heard many witnesses, had the benefit of charts and exhibits, received detailed explanations as to the points in issue and possessed the advantage of colloquy with opposing counsel. The record discloses close and careful attention to the many aspects of the case brought under 35 U.S.C. § 145 which permits a dissatisfied applicant to pursue his remedy in the District Court which may adjudge the applicant entitled to receive a patent "as the facts in the case may appear." (Emphasis supplied.)

The majority views here given effect may be found more expansively set forth in Judge Edgerton's dissenting opinion in Carbide & Carbon Chemicals Corporation v. Coe.¹ Interestingly enough, contrary to the findings authorizing a patent in the instant case, the trial judge there found no invention, and Judge Edgerton, writing in support of his ruling, said: "`Under the rule settled in this jurisdiction, while we are not absolutely bound by a chancellor's findings of fact, we are not to disturb them on appeal unless upon an examination of the evidence they are clearly wrong.'" 69 App.D.C. at page 382, 102 F.2d at page 246. We recently pointed out that under governing case law and the Federal Rules, even as to patent cases, "A finding of fact by the District Court, sitting without a jury, may be set aside on appeal only if it is clearly erroneous."² We noted that in such situations we are bound to inquire whether the District Court's findings are clearly erroneous. Here, no effort is made by the majority to demonstrate that Judge Wilkin's findings are "clearly wrong," or "clearly erroneous." They are simply and peremptorily spurned as meaningless and nugatory in the context of the majority's treatment of the problem. I shall later undertake to show that the District Judge, with thorough conviction, arrived at his amply supported findings on the new evidence before him. I fail to see how he could have found otherwise than he did.

I

Contrary to our recent cases, the majority really are saying even when the District Court has before it evidence the Patent Office did not have, on a question of fact "`the Patent Office finding must be accepted if it is "consistent with the evidence," the Patent Office being an expert body pre-eminently qualified to determine questions of this kind.' Esso Standard Oil Co. v. Sun Oil Co., 97 U.S. App.D.C. 154, 157, 229 F.2d 37, 40." That case did not so rule, I submit, except in situations where the new evidence amounts to a mere preponderance. On the contrary, the opinion pointed out, 97 U.S.App.D.C. at page 159, 229 F.2d at page 42: "Of course, if the decision of the Patent Office is not warranted on the evidence before it, or if the new evidence reaches the necessary standard, the District Court may rule as the totality of the evidence may require." (Emphasis mine.)

The majority in support of the status it accords to the Patent Office action cites Minnesota Mining & Mfg. Co. v. Carborundum Co., 3 Cir., 1946, 155 F.2d 746, 748. But that case went off on the "mere preponderance" test (compare Etten v. Lovell Manufacturing Company, 3 Cir., 1955, 225 F.2d 844, 848, certiorari denied, 1955, 350 U.S. 966, 76 S.Ct. 435, 100 L.Ed. 839, and the proof was deemed insufficient to meet the "thorough conviction" requirement spelled out in our case of Esso Standard Oil Company v. Sun Oil Company, supra note 2. In this respect, the result in the Minnesota Mining case was simply the converse of our Carbide & Carbon Chemicals case, supra note 1, where we found invention, thus reversing the District Court. Judge Edgerton explained that the latter opinion "should be understood to mean, not that the usual presumptions of administrative and judicial correctness are inapplicable in suits to obtain a patent, but that the evidence in that particular case overcame these presumptions."³ (Emphasis supplied.)

Therefore, I would suppose the true rule to be that above quoted from the Esso Standard Oil Company case, supra. So applied, the test was overwhelmingly met by the evidence here, in character and amount carrying thorough conviction. The answers on cross-examination quoted...