This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 3, and 4 of application serial No. 384,782, filed July 23, 1964, entitled "New Aldehydes of the Fulvene Series and New Processes of Preparing the Same." No claim has been allowed.
This case comes to us with the following somewhat involved but important background. On August 17, 1959, appellant filed two German applications, one relating to certain fulvene derivatives and the other to certain cyclopentadiene derivatives. By appellant's admission, neither German application contained any disclosure of utility, such disclosure having been unnecessary in Germany. On August 1, 1960, within one year of the German filings, appellant filed a U. S. application
On April 27, 1961, during the pendency of the parent application, one of appellant's two German applications (hereinafter referred to as "Hafner") was published.
All the appealed claims stand rejected as being "fully met (35 USC 102)" by both Hafner and an article published in May 1960 by one Arnold.
Until his brief before this court, appellant conceded that
Now, however, appellant urges that these references do not qualify as "enabling" disclosures
In essence, appellant is contending that a double standard should not be applied in determining the adequacy of a disclosure to anticipate under § 102, on the one hand, and to support the patentability of a claim under § 112 on the other. He feels that a disclosure adequate for the one purpose is necessarily adequate for the other but, unhappily for him, this is not so. As we shall develop, a disclosure lacking a teaching of how to use a fully disclosed compound
Standing alone, appellant's argument against a double standard is a plausible proposition. However, when considered in light of the specific provisions of § 102, and § 112 as it has been interpreted, it is seen to be untenable — § 112 provides that the specification must enable one skilled in the art to "use" the invention whereas § 102 makes no such requirement as to an anticipatory disclosure. The disclosure of how to use must relate to a use of the kind considered by the Supreme Court in Brenner v. Manson to be a sufficient utility. The majority of this court has spoken in Kirk and Joly, supra note 7, as to its construction of the Manson requirement. Thus, the double standard which appellant criticizes is now, implicitly if not explicitly, required by law, at least in situations such as we have here, although the "invention" per se claimed is fully disclosed and though the manner of "making," as distinguished from "using," the invention is also fully disclosed or is obvious.
Returning now to the question of appellant's right to his claims of priority, the examiner held appellant not entitled to the filing date of either his German applications or his parent U. S. application because the latter allegedly did not comply with § 112 (as required by § 120) in that the "how to use" requirement of § 112 was not met.
The examiner and board were of the view that, although persons skilled in the art might well have no difficulty preparing acetal resins from the compounds of appellant's invention, the parent application disclosure was still inadequate under § 112 because there is no express disclosure of a specific use to which the resulting resins can be put, and appellant has not shown that such a use would be obvious.
After carefully reviewing the record and appellant's arguments and in view of the law as established by Brenner v. Manson, Kirk, and Joly, the decision below appears to be correct.
While arguing that his parent application did in fact comply with the first paragraph of § 112, appellant also maintains that § 120
Finally, appellant argues that the instant application is entitled to the filing date of the German applications even though we find it is not entitled to the date of the parent U. S. application. We have carefully considered appellant's extensive arguments but hold that the express language of §§ 119 and 120 requires the contrary conclusion for the reasons stated above. Appellant has argued that his failure to disclose adequately the utility of his invention is a
Here the parent application is found to be fatally defective. Appellant further argues that his parent application was sufficient, under Rules 53 and 55 to be given a filing date for examination and that its defect was only a "minor informality" such as contemplated by Rule 53(a). An application can be given a filing date and be examined and still contain a fatal defect requiring its rejection. We have already expressed our disagreement with the "minor informality" theory in discussing the "technical" defect argument. What was added in the continuation-in-part to render it adequate under the law was clearly "new matter" under 35 U.S.C. § 132.
Because of the primary ground of our decision — inability to obtain the benefit of the filing date of the U. S. parent application — it follows that appellant does not get the benefit of the filing date of the German applications on which it was based.
The decision of the board is affirmed.
WORLEY, C. J., and ALMOND, J., concur in the result.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application * * *. [Emphasis added.]