LOURIE, Circuit Judge.
Herbert L. Eiselstein et al. appeal from a decision of the Board of Patent Appeals and Interferences in interference number 102,601, holding claims 1-19 of United States Patent 4,788,036 unpatentable under 35 U.S.C. § 102(b). Because the Board properly denied Eiselstein et al. the benefit of an earlier application's filing date under 35 U.S.C. § 120 with respect to claims 1-7 and 19, but erred in denying Eiselstein et al. the benefit of that filing date with respect to claims 8-18, we affirm in part and reverse in part.
This appeal involves an interference between United States Patent 4,788,036, naming Appellants (collectively "Eiselstein") as inventors, and United States patent application serial number 869,138, naming Appellees (collectively "Frank") as inventors. The Eiselstein patent issued on November 29, 1988 from application serial number 914,137, filed October 1, 1986 (the "Eiselstein application"). The Eiselstein application was a continuation-in-part of application serial number 566,601 (the "parent application"), filed December 29, 1983, which in turn was a continuation-in-part of application serial number 255,158 (the "grandparent application"), filed April 17, 1981. Eiselstein is also the named inventor on European Application 066361 (EP'361), published December 8, 1982, which corresponds substantially to the grandparent application. Frank was designated the senior party in the interference based upon the earlier May 30, 1986 filing date of his application.
The subject matter in interference is a nickel-based alloy having high strength, ductility, and resistance to corrosion. The alloy may be used for, inter alia, production of tubing and associated hardware for deep sour gas and oil well applications. The dispute
Two representative claims of the Eiselstein patent read as follows:
Claim 1 is representative of claims 1-7 and 19. Claim 15 is representative of claims 8-18.
In the interference, the Examiner-In-Chief (EIC) held that Eiselstein's claims 1-7 and 19 were anticipated by EP'361 and hence were unpatentable under § 102(b). In so holding, the EIC denied Eiselstein's claim under § 120 for benefit of the grandparent application's filing date. The EIC determined that the grandparent did not satisfy the written description requirement of 35 U.S.C. § 112 for claims 1-7 and 19 because it described a nickel content of 45 to 55% weight percent, not about 50 to about 60%, as required by those claims.
The Board upheld this determination and further held that Eiselstein's claims 8-18 were also unpatentable under § 102(b). The Board determined that, because the grandparent application did not use the word "about" in reference to the nickel content of the alloys described, the invention of claims 8-18 was not described therein and these claims could not be accorded the filing date of the grandparent application. Thus, while EP'361 did not contain a disclosure of claims 8-18, it did describe subject matter within the scope of the claims, and the claims were therefore held to be anticipated by EP'361. The interference resulted in a determination by the Board that Eiselstein was not entitled to a patent on any of his claims.
In its decision, the Board advised Eiselstein et al. that they could
Within the two-month period specified by the Board, but later than the one-month regulatory time limit for filing a Request for Reconsideration of a Board decision, see 37 C.F.R. § 1.658(b), Eiselstein filed a Request for Reconsideration to contest the § 102(b) rejection of claims 8-18. The request was dismissed as untimely in the absence of a showing of sufficient cause. See 37 C.F.R. § 1.645(b). Eiselstein's subsequent Request for Reconsideration and Petition to the Commissioner asking for relief from the dismissal of the Request was denied. Eiselstein now appeals pursuant to 35 U.S.C. § 141.
"A person shall be entitled to a patent unless[, inter alia, ] the invention was ... described in a printed publication in ... a
Eiselstein first argues that the Board erred in rejecting claims 1-19 under § 102(b), asserting that he was entitled to claim the benefit of the filing date of his grandparent application pursuant to § 120. Eiselstein also argues that the Board did not afford him procedural due process when it rejected claims 8-18 under § 102(b) for the first time in its final decision. In Eiselstein's view, the Board did not afford him an adequate opportunity to respond to the § 102(b) rejection because it did not explicitly set a time for him to respond and it effectively left him only the option of filing a reissue application, thereby causing him to impliedly admit the soundness of the rejection. Because we agree with Eiselstein that the Board's rejection of claims 8-18 was in error, we need not address Eiselstein's procedural argument and we turn directly to the merits.
The correctness of the Board's rejection of claims 1-19 under § 102(b) depends on whether or not Eiselstein's grandparent application satisfies the written description requirement of § 112, ¶ 1, for the subject matter of those claims. Compliance with the "written description" requirement is a question of fact, to be reviewed under the clearly erroneous standard. Id. If that requirement is met, claims 1-19 are entitled to the benefit of the grandparent's filing date under § 120.
The first paragraph of § 112 reads as follows:
35 U.S.C. § 112, ¶ 1 (emphasis added).
"Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1115 (Fed.Cir.1991) (quoting In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 623-24 (CCPA 1973)). In order to determine whether a prior application meets the "written description" requirement with respect to later-filed claims, the prior application need not describe the claimed subject matter in exactly the same terms as used in the claims; it must simply indicate to persons skilled in the art that as of the earlier date the applicant had invented what is now claimed. Id. at 1563, 19 USPQ2d at
The first question we must address is whether the Board clearly erred in determining that Eiselstein's grandparent application did not provide a written description of the nickel content of the nickel-based alloy set forth in claims 8-18, which recite various ranges of different elements, and "the balance nickel, the nickel being from about 45% to about 55% of said alloy [emphasis added]." The grandparent application described "An alloy containing about 15% to 22% chromium, 10% to 28% iron, 6% to 9% molybdenum, 2.5% to 5% columbium, 1% to 2% titanium, up to 1% aluminum, advantageously 0.05 to about 0.1% aluminum, and balance essentially nickel in a weight proportion of 45% to 55% of the alloy [emphasis added]." Although in that application, the word "about" does not immediately precede the nickel range limits, Eiselstein argues that, according to standard English usage, the word "about" used before the first term of a series of elements applies to all members of that series. Frank agrees with Eiselstein's position, and further points out that to require the use of "about" before every range would be both cumbersome and redundant.
As indicated earlier, the grandparent application need not contain precisely the same words as are found in claims 8-18, see Ralston, 772 F.2d at 1576, 227 USPQ at 180; rather, the application simply must indicate to a person skilled in the art that the range 45% to 55% was intended to be approximate, i.e., to mean "about." We conclude that this was unmistakably the case.
The grandparent application describes an alloy comprised of a series of inexact ranges of elements with the balance of that composition described as "essentially nickel." "Essentially" is a vague term. The description also connotes a degree of approximation, or imprecision, in that the nickel comprises the "balance" of the composition, an amount that varies with the amounts of the other components. The amount of nickel is clearly not the critical aspect of the invention, but only the residual amount, depending upon the amounts of the more critical elements. Furthermore, the grandparent specification contains the following statement after the alloy's description: "Auxiliary elements, including malleablizers and deoxidizers, can be present in permissible small amounts ... and residual small amounts of [other substances] can remain [with] tolerable impurities possibly present." The specification further instructs that, for certain applications, the composition of the alloy can be more "specially restricted" or "closely controlled" for more consistent or advantageous results.
In "Table I" of the specification the chemical analyses of 3 sample alloys are set forth. Eiselstein lists the weight percent of each element in each alloy to one-hundredth of a percent. Such a description indicates that Eiselstein knew how to be precise when he intended to, and supports the conclusion that otherwise, when a whole number was stated, a precise amount was not intended. Thus, we are of the firm conviction that in his grandparent application, Eiselstein disclosed the invention of an alloy of various elements and the balance nickel, the nickel being an imprecise quantity, i.e., from about 45% to about 55% of said alloy and, on the basis of that disclosure, one skilled in the art reading the grandparent application would readily
We are not unresponsive to the Commissioner's argument that the word "about" in a later added claim can broaden an original disclosure that indicates to one skilled in the art that his or her invention is to a precise, not an approximate, amount, range, or limit. Under such circumstances, the term "about" in the later added claim is new matter and may not receive the benefit of an earlier filing date. The meaning of the word "about" is dependent on the facts of a case, the nature of the invention, and the knowledge imparted by the totality of the earlier disclosure to those skilled in the art. See In re Wertheim, 541 F.2d at 262, 191 USPQ at 96. We are also mindful that the word "about" may lead to indefiniteness under § 112, ¶ 2, see Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1218, 18 USPQ2d 1016, 1031 (Fed.Cir.), cert. denied, 502 U.S. 856, 112 S.Ct. 169, 116 L.Ed.2d 132 (1991), but that is not at issue here.
In this case, it was clear error to find that a person skilled in the art would not have considered the grandparent application to describe an approximate range of nickel. The later use of the term "about" to describe the range of nickel did not constitute a change to a distinct and different invention. Since the finding of the board concerning the disclosure of the grandparent application was clearly erroneous, the rejection of claims 8-18 based on that error was perforce erroneous as a matter of law.
The second question raised is whether the Board clearly erred in determining that Eiselstein's grandparent application did not provide a written description of the nickel content of the nickel-based alloy set forth in claims 1-7 and 19, which recite various ranges of different elements, "and the balance nickel with nickel constituting about 50 to about 60% of the alloy." We have carefully considered Eiselstein's assertions regarding this point. Since the grandparent application only disclosed a nickel range of 45-55%, it can hardly be said to have disclosed 50-60%. Whatever the term "about" means in this context, it is clear that it does not extend 55% to encompass 60%. Moreover, the 10% range of 45-55%, even if it is an approximate "about" 45-55%, is not the same as a very different 10% range, viz., 50-60%. The limits of these ranges vary from each other by about 10%, which is comparable to the extent of the variation within each range. Eiselstein has therefore not persuaded us that the Board clearly erred in finding that the grandparent application did not provide an adequate written description of the invention comprising 50-60% nickel.
The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences is
AFFIRMED-IN-PART and REVERSED-IN-PART.