MARKEY, Chief Judge.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals affirming the rejection under 35 U.S.C. §§ 102 or 103 (the rejection also raises a written description issue under 35 U.S.C. § 112, first paragraph) of claims 1-9, 64, and 68-70 and the rejection under 35 U.S.C. § 112, first paragraph (enablement) and second paragraph (indefiniteness), of claims 64 and 68-72 in appellants' application No. 230,091 filed February 28, 1972 (the 1972 application) for "Polyarylene Polyethers."
The invention is in the field of polymer chemistry and more specifically relates to linear thermoplastic polyarylene polyether polymers composed of recurring units having the general formula ——O-E-O-E'—— where O represents an oxygen atom,
Appellants describe a method of synthesizing these polymers by reacting a double alkali metal salt of a dihydric phenol with a dihalobenzenoid compound in the presence of certain solvents under substantially anhydrous reaction conditions.
The 1972 application includes the following disclosure with respect to the electron withdrawing group found in E' and in the E' precursor compound, that is, in the compound which is the predecessor of E' in the above general formula (we have designated paragraphs [A] and [B] and have added emphasis thereto):
The Disclosure and Prosecution History of the 1963 Application
To understand the written description issue in this appeal, it is necessary to summarize the disclosure and prosecution history of the 1963 application. The 1963 application described (and claimed) in haec verba a genus of polymers as defined by the above general formula. That application stated:
The 1963 application then discussed the identity of E and the E' precursor compound, that is, the compound which is the predecessor of E in the general formula. It stated:
organic hydrocarbon radicals such as alkylene, alkylidene, cycloaliphatic, or the
The application then mentioned by name some fifty specific dihydric dinuclear phenol (bisphenol) compounds which could be the E precursor compound. The application further stated:
Turning to the identity of the E' precursor compound, the application stated:
The 1963 application also included a discussion of the electron withdrawing group that was substantially the same as the paragraphs quoted above from the 1972 application.
The 1963 application contained twenty-six "examples" disclosing in detail the physical and chemical characteristics of fifteen species of polyarylene polyethers. One of the species was the polymer composed of these recurring structural units (which we designate as species ):
Another species disclosed was the polymer composed of these recurring structural units (which we designate as species ):
Appellants' 1963 application became involved in a three-party interference
Claim 1, now on appeal, is illustrative of the group of claims (claims 1-9, 64, and 68-70) which seek to exclude the subject matter of the lost count and which are involved in the 35 U.S.C. §§ 102 or 103 rejection:
The first "proviso" in claim 1, that "E and E' may not both include a divalent sulfone group," excludes species , the species of the lost count. The second "proviso," that "E and E' * * * may not both include a divalent carbonyl group," excludes species , which appellants state is "analogous" or "equivalent" to species .
Claims 64 and 71 are illustrative of the group of claims (claims 64 and 68-72) rejected under 35 U.S.C. § 112, first and second paragraphs:
The sole reference relied upon by the examiner and the board is:
Netherlands 6,408,130 January 18, 1965
Before the PTO, appellants conceded that the invention was fully disclosed in the Netherlands patent. However, appellants contended that the claims are entitled to the benefit of the 1963 filing date under 35 U.S.C. § 120,
The examiner and the board were of the view that the claims are not entitled to the 1963 filing date because the presently claimed subject matter is not "described" in the 1963 application as required by the first paragraph of 35 U.S.C. § 112.
Claims 64 and 68-72 were rejected under 35 U.S.C. § 112, first and second paragraphs. In his Answer, the examiner stated that the claims were rejected under § 112, first paragraph, for "being broader than the enabling disclosure" and under § 112, second paragraph,
In affirming the examiner on these rejections, the board stated:
I. The Rejections of Claims 64 and 68-72 under § 112
Claims 64 and 68-72 were rejected under both the first and second paragraphs of 35 U.S.C. § 112.
We begin with the rejections under the second paragraph of § 112. As stated in In re Moore, 439 F.2d 1232, 1235, 58 CCPA 1042, 1046-1047, 169 USPQ 236, 238 (1971):
The examiner's § 112, second paragraph, rejection was premised on the general ground that the claims are "broader than the express limitations disclosed as defining the invention" and on two specific grounds: (a) that the expression "to activate a halogen atom" is "indefinite" because "it does not specify toward what the activation is;" and (b) that "[t]he express disclosure is clearly limited to the sigma * value recited in claim 1, for example: see [[A] and [B]]." The board affirmed and stated: "an undefined sigma * value thus lacks the requisite preciseness * * *." (Emphasis added.)
Ground (a) focuses on the specific phrase "to activate a halogen atom." But the language is found only in claim 64, not in claims 68-72. Claim 68 recites "a dihalobenzenoid compound having halogen atoms activated by an inert electron withdrawing group," and claims 71 and 72 have a similar recitation. (Claims 69 and 70 depend from
Product claim 64
It is also clear from the specification as a whole, that two keys to the polymerization reaction are inert electron withdrawing groups particularly positioned on the benzenoid nucleus and a cumulative sigma * value attributable to those withdrawing groups which is sufficient to activate a halogen atom on that nucleus. If the sigma * value is not sufficient to activate a halogen atom on the benzenoid nucleus, the reaction will not take place and the polymer will not be made. See In re Angstadt, 537 F.2d 498, 190 USPQ 214 (Cust. & Pat.App.1976). The specification adequately details which sigma * values are sufficient to carry out the reaction, and any person skilled in the art would immediately recognize from the above-quoted portion of the disclosure or the specification as a whole that the halogen atom mentioned in claim 64 was on the benzenoid nucleus prior to the reaction. It is clear that those skilled in the art would have no trouble ascertaining whether any particular polymer falls within the scope of claim 64. See In re Goffe, 526 F.2d 1393, 188 USPQ 131 (Cust. & Pat.App.1975). The questioned limitation is merely surplusage, since the claim would be definite with or without it.
The point made by the board, that "an undefined sigma * value" lacks "preciseness," is also unsound.
The examiner's general ground and his ground (b) raise a lack of enablement issue properly arising under the first, not the second, paragraph of § 112. Ground (b) simply supplies the examiner's reasoning in support of the rejection of the claims under § 112, first paragraph, as "broader than the enabling disclosure."
As appellants state, the crux of this lack of enablement rejection is that although the specification describes how the halogen atoms bonded to the diahalobenzenoid compound (the E' precursor compound) must be activated in order for polymerization to occur,
First, we note that it is the function of the specification, not the claims, to set forth the "practical limits of operation" of an invention. In re Rainer, 305 F.2d 505, 509, 49 CCPA 1243, 1248, 134 USPQ 343, 346 (1962). One does not look to claims to find out how to practice the invention they define, but to the specification. In re Roberts, 470 F.2d 1399, 1403, 176 USPQ 313, 315 (Cust. & Pat.App.1973); In re Fuetterer, 319 F.2d 259, 50 CCPA 1453, 138 USPQ 217 (1963).
Second, we note that the specification as a whole must be considered in determining whether the scope of enablement provided by the specification is commensurate with the scope of the claims. In re Moore, supra, 439 F.2d at 1235, 58 CCPA at 1047, 169 USPQ at 238-39.
The present specification includes broad statements such as: "Any electron withdrawing group can be employed as the activator group in these compounds." The specification also discusses preferred embodiments, alternative embodiments, and the practical limits of operation.
Statement [A] describes preferred embodiments and practical limits of operation. It says that electron withdrawing groups having a high sigma * value ("preferably above 1.0") are preferred and that the practical limit of operation of the polymerization reaction is reached when the electron withdrawing group has a sigma * value of 0.7 (at that value the reaction rate "may be somewhat low").
Statement [B] describes an alternative embodiment ("a plurality of electron withdrawing groups") and the practical limit of operation for this embodiment. It states that the cumulative sigma * influence should be "at least about + 0.7."
The PTO would limit appellants to claims reciting a sigma * value of at least 0.7. This view is improper because it requires the claims to set forth the practical limits of operation for the invention and it effectively ignores the scope of enablement provided by the specification as a whole. As we said in In re Goffe, 542 F.2d 564, 567, 191 USPQ 429, 431 (Cust. & Pat.App. 1976):
The rejection of claims 64 and 68-72 under the first paragraph of 35 U.S.C. § 112 is reversed.
II. The Rejection of Claims 1-9, 64, and 68-70 Under § 102 or § 103, Raising Issues Under § 112 and § 120
We are convinced that the invention recited in claim 1 is "disclosed in the manner provided by the first paragraph of section 112" in the 1963 application and that claim 1 is therefore entitled to the benefit of the 1963 filing date.
While the board found that "no antecedent basis exists in the parent case" for the "limited genus" in claim 1, we see more than ample basis for claims of such scope. The 1963 disclosure is clearly directed to polymers of the type claimed. Fifty specific choices are mentioned for the E precursor compound, a broad class is identified as embracing suitable choices for the E' precursor compound, and twenty-six "examples" are disclosed which detail fifteen species of polyarylene polyethers. Only fourteen of those species and twenty-three of the "examples" are within the scope of the claims now on appeal. Two of the many choices for E and E' precursor compounds are deleted from the protection sought, because appellant is claiming less than the full scope of his disclosure. But, as we said in In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (Cust. & Pat.App.1976):
It is for the inventor to decide what bounds of protection he will seek. In re Saunders, 444 F.2d 599, 607, 58 CCPA 1316, 1327, 170 USPQ 213, 220 (1971). To deny appellants the benefit of their grandparent application in this case would, as this court said in Saunders:
The board cited as "controlling" the decisions of this court in In re Welstead, 463 F.2d 1110, 59 CCPA 1105, 174 USPQ 449 (1972); In re Lukach, 442 F.2d 967, 58 CCPA 1233, 169 USPQ 795 (1971); and In re Smith, 458 F.2d 1389, 59 CCPA 1025, 173 USPQ 679 (1972). Those decisions, because of important factual distinctions, are not controlling.
In Welstead the applicant was attempting to introduce into his claims a new subgenus where "* * * the specification * * * contained neither a description * * * of the [subgenus] * * * nor descriptions of the species thereof amounting in the aggregate to the same thing * * *." Welstead conceded the absence from his disclosure of compounds of the "second type" within the new subgenus. Welstead is thus clearly distinguishable from the present case, in which appellants' grandparent application contains a broad and complete generic disclosure, coupled with extensive examples fully supportive of the limited genus now claimed. Indeed, Welstead might have well been cited by the board in support of a decision contrary to that reached, in view of what this court there implied concerning the possibility that "descriptions of species amounting in the aggregate to the same thing" may satisfy the description requirements of 35 U.S.C. § 112, paragraph one.
Similarly, in Lukach we noted that "* * the grandparent application here does not disclose any defined genus of which the presently claimed copolymers are a subgenus." That is not the fact here. Appellants' grandparent application clearly describes the genus and the two special classes of polymer materials excluded therefrom.
In Smith the applicant sought the benefit of his prior application for a broadened generic claim, replacing the claim limitation "at least 12 carbon atoms * * *" with a new limitation calling specifically for 8 to 36 carbon atoms, where there was no disclosure of either the range itself or of a sufficient number of species to establish entitlement to the claimed range. Appellants, in contrast to the applicant in Smith, are narrowing their claims, and the full scope of the limited genus now claimed is supported in appellants' earlier application, generically and by specific examples.
The board indicated that "it is manifestly immaterial" why appellants limited their claims. Though it is true that insufficiency under § 112 could not be cured by citing the causes for such insufficiency, it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, as we hold on the facts of this case, the "written description" in the 1963 specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining. The facts of the prosecution are properly presented and relied on, under these circumstances, to indicate that appellants are merely excising the invention of another, to which they are not entitled, and are not creating an "artificial subgenus" or claiming "new matter."
In summary, and for the reasons discussed, the rejections of claims 64 and 68-72 under § 112, first and second paragraphs, are reversed; appellants' 1963 disclosure satisfied § 112, first paragraph, with respect to claims 1-9, 64, and 68-70 and appellants are, therefore, entitled to the benefit of their 1963 filing date under 35 U.S.C. § 120. The Netherlands patent is thus rendered unavailable as a prior art reference, and the rejection of the claims under 35 U.S.C. §§ 102 or 103 is reversed.
LANE, Judge, dissenting in part.
I would affirm the rejection of claims 64 and 68-72 under § 112, paragraphs 1 and 2, because the specification indicates that a minimum sigma value of + 0.7 is an essential requisite. These claims fail to recite this requisite, thus fail to define appellants' invention and are broader than the disclosure. I concur in reversing the rejection of claims 1-9.
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, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. [Emphasis added.]
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, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. [Emphasis added.]
* * * * * *
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.