This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection under 35 U.S.C. § 112 of claims 1 and 3-11 of application serial No. 766,192, filed October 9, 1968, entitled "Polymerization Pre-Filter." The board stated under Rule 196(c) that, in the absence of a new ground of rejection, claim 2 would be allowed if rewritten in independent form with changes indicated by the board, and appellant has apparently filed an amendment complying with the board's statement, thus placing claim 2 in condition for allowance. We reverse as to claims 1 and 3-11.
The invention relates to the removal of agglomerates of delusterants and other finely-divided solid powders, referred to as "pigment," from polymers by filtration at the optimum time. The pigment agglomerates, which tend to foul the spinning filter used to spin filaments from the polymer, are removed by filtering the polymerization mass before its viscosity has exceeded 400 poises, and preferably at considerably lower viscosities. As appellant explains, "Removal
Claim 1 is treated by both appellant and the solicitor as representative of all the appealed claims. It reads:
The claims may be read as though the term "melt" has been cancelled in every occurrence, since appellant has apparently filed an amendment deleting "melt" wherever it appears in the claims in response to the board's criticism of the term as new matter with an indication that appellant should cancel the term.
The sole rejection affirmed by the board was "on the grounds that the term `polymerizable material' is not disclosed 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 (35 U.S.C. § 112, paragraph one)." The Examiner's Answer stated only the following as the reason for the failure of the specification to comply with the stated statutory requirement:
The board, amplifying the examiner's reasoning, stated the following as the basis for the rejection:
And, on reconsideration, the board, apparently agreeing with appellant's observation "that there is nothing of record to indicate that one skilled in the art could not use appellant's process in polymerizing any polymer," stated that:
The solicitor, zeroing in on specific portions of § 112, first paragraph, quoting from this court's opinion in In re Marzocchi, 439 F.2d 220, 223, 58 CCPA 1069, 1073 (1971), states that the specification disclosure does not contain "a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented" and hence is not in compliance "with the enabling requirement of the first paragraph of § 112." In addition, the solicitor seeks to state an additional basis under paragraph one in saying that, "consonant with the general position implicit below, there is a `failure of the specification to meet the description requirement of the first paragraph of 35 U.S.C. 112 as to the broad claims on appeal'; In re DiLeone, 58 CCPA 934, 935, 436 F.2d 1033, 1034, 168 USPQ 598 (1971)."
§ 112. Paragraph One — Enablement
It is apparent from the language of the board that the rejection is based on the enablement portion of the first paragraph of § 112 which, as we have held, "requires that the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art." In re Fisher, 427 F.2d 833, 839, 57 CCPA 1099, 1108 (1970). Whether, in a particular case, the requisite "reasonable correlation" between the scope of claims and the scope of enablement provided by the specification exists is often a difficult question. Compounded here with the resolution of that question, which requires a factual inquiry into the knowledge of persons of ordinary skill in the particular art, is the question whether, under the circumstances of this case, the applicant ought to bear the burden of coming forward with evidence to prove enablement — or whether the examiner should have the burden of coming forward with evidence to disprove it — when "there is nothing of record to indicate that one skilled in the art could not use appellant's process in polymerizing any polymer," and "neither is there any evidence that polymerizable materials other than nylon intermediates will be operable in the claimed process."
The board resolved the latter question against appellant, giving as its reasons the general assertion that the "properties of `polymerizable materials' can vary over a wide range, rendering it quite uncertain as to whether or not the claimed process is broadly applicable to all such materials." The board appears to have based its assertion on its own knowledge of polymer chemistry. Throughout the prosecution, appellant has advanced the theory that his "invention is a purely mechanical filtering process, and is not dependent on the chemical composition of the polymerizable material * * * temperature, pressure, or on any process conditions other than the viscosity of the reaction mass." Appellant further argued:
To the extent that there may be a difference in the resolution of the question whether enablement is accomplished when the Patent Office has not shown the inability
It is clear from the decision of the board that the unpredictability which it noted was in the admittedly chemical fact that the "properties of `polymerizable materials' can vary over a wide range," but no reasons were given to appellant by the Patent Office for the alleged failure — or at least uncertainty — of the class of "polymerizable materials" to work in the claimed process to controvert the statement in appellant's application that his invention, in its broader aspects, is applicable to other polymers. See In re Nguyen Dinh-Nguyen, Cust. & Pat.App., 492 F.2d 856, decided concurrently herewith. It is clear that even in cases involving the unpredictable world of chemistry such reasons are required. As we stated in In re Marzocchi, 439 F. 2d at 223-224, 58 CCPA at 1073:
Here the only reason given appellant why his specification does not enable one skilled in the art to use his invention as broadly as it is claimed is the statement of the board that "polymerizable materials" include "Not only * * * all of the very many organic polymers * * * but also inorganic polymers." But even this statement only identifies a subgenus of "polymerizable materials" without giving a reason for the implication inherent therein that inorganic polymers would not work in appellant's process. Appellant correctly notes:
The solicitor, possibly recognizing this deficiency, gives the first real explanation of why he doubts the truth of appellant's assertion that his invention is practicable with all polymerizable materials. He says:
And, in a thirty-three line footnote at the end of the above quotation the solicitor lists several such fast "polymerizable materials" with appropriate textbook authorities.
We think, however, as we stated in a similar context in In re Barr, 444 F.2d 588, 596, 58 CCPA 1388, 1401 (1971), that "the filing of the solicitor's brief is far too late a point in prosecution to inform an applicant of what additional working examples are thought to be needed to support his claims" or, stated another way, what materials covered by the claims allegedly would not work in the invention as claimed.
Here, however, we fail to see how even the rapid polymerizable materials identified by the solicitor (1) are covered by appellant's claims which require the pre-filtering "while polymerization is proceeding and before the viscosity of said material exceeds 400 poises," or (2) if they are within the claim, why one skilled in the art would not immediately appreciate that they are not suitable for use in the process. See In re Skrivan, 427 F.2d 801, 57 CCPA 1201 (1970); In re Cook, supra, and In re Anderson, 471 F.2d 1237 (CCPA 1973).
Accordingly, there appears to be no basis for the non-enablement rejection on the theory that claims read on undisclosed polymers. While the claims literally comprehend numerous polymers in addition to the one specifically described in appellant's specification, nylon 66, no persuasive reason has been given by the Patent Office why the specification does not realistically enable one skilled in the art to practice the invention as broadly as it is claimed.
Finally, the solicitor takes the position that there is another basis for lack of enablement here since appellant's disclosure is limited to "polymerizable materials" capable of producing fiber-forming polymers while the claims are not so limited. The solicitor finds this limitation implicit in the specification where appellant explains the function of his filtering process in removing the agglomerates which "foul the spinning filter normally provided just before the spinneret," the last word representing
The Description Requirement
The solicitor's reliance on what this court has referred to as the "description requirement" of the first paragraph of § 112 is misplaced. The so-called "description requirement," which exists in the first paragraph independent of the enablement (how to make and how to use) portions, serves essentially two functions. In the simple case, where no prior application is relied upon, the description requirement is that the invention claimed be described in the specification as filed. In re DiLeone, 436 F.2d 1404, 58 CCPA 925 (1971); In re DiLeone, 436 F.2d 1033, 58 CCPA 934 (1971); In re Smythe, 480 F.2d 1376, 1385 (CCPA 1973). As such, a rejection on the description requirement is tantamount to a new matter rejection under 35 U.S.C. § 132. In re Smythe, supra. Both are fully defeated by a specification which describes the invention in the same terms as the claims. Here there has been no assertion by the board or the examiner that there is any lack of correspondence between the appealed claims and the specification (including the original claims) as filed. Indeed the scope of the language of the specification clearly corresponds to the language of the claims, the "polymerizable material" of the claims being referred to variously by the specification as a "polymer" and a "polymerizable mass * * * added * * * as an aqueous solution of monomeric material, such as hexamethylene-diamine adipate." (Emphasis supplied.)
The rejection of claims 1 and 3-11 under § 112, paragraph one, is reversed.