Application of Roland Ralph Dileone and Howard Robert Lucas

436 F.2d 1404, 58 C.C.P.A. 925

• Court: Court of Customs and Patent Appeals
• Decided: February 11, 1971
• Docket: Patent Appeal 8402
• Status: Published

Opinions

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, which affirmed the rejection of claims 1-9, 13 and 17 in appellants’ application serial No. 392,635, filed August 27, 1964, for “Polymeric Material and Process of Preparing the Same.”

The invention is a new and unobvious class of polyimides useful in making molded articles and also useful as coating or self-supporting films. Claim 1 is illustrative for framing the issues before us:

1. A polyimide of (1) a diamine, (2) 3,4-dicarboxy-l,2,3,4-tetrahydro-1-naphthalenesuccinic dianhydride and (3) a different dianhydride of an organic tetracarboxylic acid, wherein the mol percent ratio of (2): (3) is between about 35:65 and 65:35, respectively.

The rejection is solely for insufficient disclosure, the examiner having stated that the recitations “ ‘a diamine’ and ‘a different dianhydride of an organic te-tracarboxylic acid’ are considered to be too broad to be supported by the disclosure.” The board agreed.

It has not been contended by the Patent Office that the disclosure fails to enable a person skilled in the art to make and use the entire class of polyimides claimed. The sole issue is whether the specification satisfies the description requirement of the first paragraph of 35 U.S.C. § 112, with respect to claims of the breadth sought here.

In recent cases we have recognized that the statutory requirement .that the specification “describe the invention” might not be met even where the specification satisfies the related statutory requirement that it “enable any person skilled in the art * * * to make and use the same.” In In re Robins, 429 F.2d 452, 57 CCPA 1321 (1970), in considering a possible rejection under, the first paragraph of § 112, we stated that such a rejection

must be reversed inasmuch as the specification contains a statement of appellant’s invention which.., is as broad as appellant’s broadest claims, and inasmuch as the sufficiency of the specification to satisfy the “best mode” requirement of § 112 and to enable one skilled in the art to practice appellant’s process as broadly as it is claimed has not been questioned.

429 F.2d at 456 (emphasis added). In In re Ahlbrecht, 435 F.2d 908 decided January 7, 1971, we held that the description requirement had not been satisfied as to a claimed class of esters, even though the specification might have indirectly enabled one skilled in the art to make and use the entire class. It is clear from Robins and Ahlbrecht that it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.¹ The first paragraph of § 112 requires both description and enablement. What is needed to meet the description requirement will necessarily vary depending on the nature of the invention claimed. In Robins, as mentioned above, “a statement of appellant’s invention which is as broad as appellant’s broadest claims” was considered sufficient.

It is the position of the Patent Office that the expression “a diamine” is too broad because the specification describes using only aliphatic and aromatic dia-mines and the expression would include heterocyclic diamines. Appellants agree that the expression includes heterocyclic diamines but contend that the description of diamines in the specification is as broad as the recitation in the claims. We agree. The specification states: “One of the objects of the present invention is to produce a polyimide reaction product of (1) a diamine, (2) * * * and (3) * * The specification later states: “The first reactant is a diamine which may be either an aliphatic diamine or an aromatic diamine.” (Emphasis ours.) The solicitor would have us read “must” for “may.” While we recognize that it is a common practice in drafting patent applications to use “may” in a mandatory sense, we note that the originally filed claims, which are part of the disclosure, recited “a diamine” without further limitation as the first reactant. We therefore agree with appellant that “may” should be interpreted in this case as illustrative and not as limiting the description of diamines to aliphatic and aromatic dia-mines. The same considerations apply to refute the solicitor’s contention that since the specific aliphatic diamines listed in the specification are saturated, the only aliphatic diamines described as reactants are saturated.

We turn now to the recitation of “a different dianhydride of an organic tet-raearboxylic acid.” The examiner held, and the board agreed, that the specification described only tetracarboxylic acid anhydrides which were either saturated or aromatic carbocyclics, and hence the description did not include heterocyclic dianhydrides of tetracarboxylic acid. We find no basis for such a conclusion. The specification states:

The third component used in the preparation of the polyimide reaction products of the present invention is a different dianhydride of an organic tetracarboxylic acid. A comparatively limited number of such dianhydrides • is available commercially and only a few additional dianhydrides have been disclosed in the literature which are not available commercially insofar as it is known. Among the dianhydrides which * * * may be used * * * in the preparation of the polyimides of the present invention are [seven listed carbocyclic dianhy-drides] and the like. (Emphasis ours.)

We find nothing in this passage which would limit the description of dianhy-drides by excluding known heterocyclic dianhydrides. The language used in listing the seven carbocyclic dianhy-drides is clearly illustrative and does not limit the broader description contained in the preceding sentences. Moreover, we note that the expression in question appeared in the originally filed claims.

The decision of the board is reversed.

Reversed.

1 . For greater clarity on this point; consider the case where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and O; yet the class consisting of A, B and O has not been described.