RICH, Judge.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claim 30 in appellants' application serial No. 329,212, filed December 9, 1963, for a cephalosporin-type antibiotic known as cephaloridine. No claim has been allowed. We reverse.
The Subject Matter Claimed
The appealed claim is drawn to a single compound, by structural formula, and reads:
30. A compound of the formula
This compound is said to be a broad spectrum antibiotic, effective against both gram-positive and gram-negative micro-organisms, and to possess many other virtues not relevant here because of the nature of the rejection.
The Rejection
Appellants' claim has been rejected as anticipated by U. S. patent No. 3,218,318, issued to Edwin H. Flynn November 16, 1965, on an application filed in the United States August 31, 1962, and available against appellants' application by virtue of 35 U.S.C. § 102(e) as of its filing date. This reference discloses generically a class of cephalosporin-type compounds
in which R
However, the board found: (1) that Flynn's examples 4 and 10 "adequately disclose the exact precursors of the presently claimed compound"; (2) that Flynn's statement that
was adequate to teach how to convert the C-type precursors disclosed in examples 4 and 10 to the C
The effect of this holding, of course, was that the board did not have to look at the extensive objective evidence which appellants had offered to rebut any inference of obviousness which might be thought to arise from the teachings of the Flynn patent.
OPINION
The sole issue in this case is whether cephaloridine is "described" in the Flynn patent within the meaning of that word in 35 U.S.C. § 102(e).
In this case we have no difficulty in deciding that the portions of the Flynn reference relied upon by the Patent Office do not identically describe the claimed subject matter. As appellants point out, the compounds of Flynn's examples 4 and 10 are the "exact precursors" of appellants' compound "only to the extent that appellants have discovered that cephaloridine will be formed if the acid [disclosed in example 10] is first selected and then carefully reacted with a particular tertiary amine which also must be selected." (Emphasis in original.) Of course, it does appear that the "particular tertiary amine" to which appellants refer is pyridine, which is mentioned elsewhere in Flynn as an example of the class of reactants
The board, apparently recognizing the weakness of its position in attempting to arrive at an anticipation by combining the disclosures in examples 4 and 10 with the above-quoted teaching elsewhere in the patent of how to convert a particular, different cephalosporin C-type compound into cephalosporin C
Although the board declined to discuss four relatively recent decisions by this court in cases involving description requirements in various sections of the patent statute
Accordingly, we will not sustain the rejection on the ground on which it was made. Concerning the rejection as it is reformulated by the dissent, we express no opinion. It may be that the Patent Office should have relied upon the portions of Flynn on which the dissent relies, or it may be that they had very good reasons for not doing so. In any event, they did not rely on those teachings in Flynn, and appellants have therefore had no opportunity to comment thereon. We do not conceive that it is part of our duty to make better rejections for the Patent Office, even if we could be sure that we really were making a "better rejection," nor do we think that it would be consistent with the requirements of due process for us to do so for the first time on appeal, without notice to the affected party.
Furthermore, we point out that we are not granting appellants a patent, if that is what the dissent means by "bestowing on the applicants a license to litigate." We are simply reversing a rejection on the ground that the claim on appeal is anticipated under § 102 by Flynn. It may well be that it is unpatentable because obvious under § 103 in view of Flynn, but no such rejection is before us. The Patent Office is free to make such a rejection after our decision in this case should it think it appropriate. In re Ruschig, 379 F.2d 990, 54 CCPA 1551 (1967); and In re Fisher, 448 F.2d 1406, 58 CCPA ___ (1971). In any event, it is the Patent Office which grants patents, not this court. It may further be observed that it is not now the practice in this court, if it ever was, to apply a different standard in cases which are in "complex areas of technology"
The decision of the board is reversed.
Reversed.
BALDWIN, Judge (concurring, with whom ALMOND, Judge, joins).
While I agree that the disclosure in the Flynn patent is insufficient to constitute an anticipation of the claimed invention, I cannot agree with the language of the principal opinion that for the rejection based on an anticipation to have been proper, "the Flynn reference must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference."
The test which determines whether an invention has been anticipated by a reference is whether the description of the invention in the reference is "sufficient to put the public in possession of the invention." In re LeGrice, 301 F.2d 929, 933, 49 CCPA 1124, 1131 (1962), citing Curtis on Patents, 3d ed., Sec. 378 and Seymore v. Osborne, 78 U.S. (11 Wall.) 516, 555, 20 L.Ed. 33 (1870). See also In re Brown, 329 F.2d 1006, 51 CCPA 1254 (1964); In re Sheppard, 339 F.2d 238, 52 CCPA 859 (1964); In re Bird, 344 F.2d 979, 52 CCPA 1290 (1965); In re Borst, 345 F.2d 851, 52 CCPA 1398, (1965); In re Baranauckas, 395 F.2d 805, 55 CCPA 1204 (1968); In re Hoeksema, 399 F.2d 269, 55 CCPA 1493 (1968); In re Wilder, 429 F.2d 447, 57 CCPA 1314 (1970); and In re Moore, 444 F.2d 572, 58 CCPA 1341 (1971). I find it unreasonable to assume that Judge Rich and Judge Lane intend to overrule this long line of cases sub silentio. If what they intend is merely to rephrase the accepted test so as to simplify its application, they have missed the mark.
The language used in the principal opinion would not in fact simplify the determination of the suitability of a reference as an anticipation under 35 U.S.C. § 102. That language requires the tribunal to analyze the teachings of a reference to determine which are equivocal and which are unequivocal. It must also be determined which disclosures are directly related to each other by the teachings of the reference, thus making picking and choosing proper, and which disclosures are only indirectly related, or are not related at all. This is no simpler than reading the reference as a whole and determining what it fairly teaches to one of ordinary skill in the art.
The more important difficulty with the position taken in the principal opinion is that it misdirects the inquiry. It directs the tribunal to analyze the structure of the reference rather than its content. The real question is not how logically the various disclosures in a reference are related to each other, it is rather what the reference fairly teaches to one of ordinary skill in the art, no matter how ineptly it does so. Of course, the more logically the reference is laid out the clearer will be its teachings and the easier will be the job of those who must interpret it. But the law requires us to determine whether the invention has been identically described, not whether it has been logically described by the reference.
The Flynn reference has been described in both the principal opinion and the dissent. I will therefore merely state what I would consider that reference fairly teaches to one of ordinary skill in the art. Flynn does disclose the cephalosporin C-type precursor of the instantly claimed C
I would not place as much weight as the dissent does on Flynn's statement that the C
I disagree with the principal opinion on one last point. The opinion seems to suggest that we violate due process whenever we consider portions of a reference not specifically mentioned by the examiner or the board. I know of no requirement that the examiner and the board must list the sentences in the reference upon which they rely, nor can I see any sense in imposing such a requirement. All of the disclosure of a reference must be considered for what it fairly teaches one of ordinary skill in the art. In re Meinhardt, 392 F.2d 273, 276, 55 CCPA 1000, 1004 (1968). As Judge Smith aptly stated in Meinhardt:
In re Meinhardt, supra, 392 F.2d at 280, 55 CCPA at 1008-1009. See also In re Halley, 296 F.2d 774, 49 CCPA 793 (1961); In re Van Mater, 341 F.2d 117, 52 CCPA 1076 (1965).
WORLEY, Chief Judge (dissenting).
I cannot agree with the majority that cephaloridine is not "described" in the Flynn patent in the sense of 35 U.S.C. § 102(e).
It cannot be said, of course, that cephaloridine per se is explicitly named by Flynn, but a clear implicit description is sufficient. In re Baranauckas, 228 F.2d 413, 43 CCPA 727 (1955). Reference to the Flynn disclosure will establish, I submit, that such a description exists in the present instance.
The principal opinion has set forth portions of the generic and more specific disclosure of Flynn relied on by the board. The class of cephalosporin compounds disclosed generically by Flynn may be divided into several groups, of which the groups designated as cephalosporin C type and cephalosporin C
There can be no doubt from the above disclosure that Flynn regarded the cephalosporin C
I think it is clear that Flynn directs one of ordinary skill in the art, who is interested in particular cephalosporin C
From what has been said of Flynn, it should be evident that there is no need in this case for those skilled in the art to resort to picking and choosing various disclosures unrelated to each other by the reference teachings, as the principal opinion implies. On the contrary, the disclosures of cephalosporin C compounds, cephalosporin C
The principal opinion also criticizes the board for reading into references "things that are not there." My difficulty with that position stems from its disregard for the "things"—or "blaze marks"— that are there. In my opinion, the majority is groping for reversible error where none exists. As far back as 40 years, and over the years since, it has been a firm principle that this court would not reverse decisions of the tribunals below in highly complex areas of technology unless manifest error was shown. See, e. g., In re Wietzel, 17 CCPA 1079, 39 F.2d 669, 5 USPQ 177 (1930); In re Bertsch, 132 F.2d 1014, 30 CCPA 813 (1942); In re Stoll, 161 F.2d 241, 34 CCPA 1058 (1947). Needless to say, such error has not been shown here.
Although the majority would undoubtedly disclaim the notion, I cannot help but feel that it is resolving doubt on the issue presented in favor of the applicants. In doing so, this court is not doing the applicants or the public any favor. Rather it is bestowing on the applicants a license to litigate of dubious validity at a time when, it is reliably estimated, 80% of contested patents are being held invalid in other federal courts. And the other sad result here is to take from the public that which is already theirs by imposing on them a monopoly that should not exist. Appellants have given the public nothing it had not already been given by Flynn. I would remind my colleagues that patents are not like party favors to be passed out at random. The enabling statutes established under the Constitution clearly require more than appellants have offered as a quid pro quo to the public in exchange for the monopoly the majority awards them.
I find no error in the board's decision, and would affirm.
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