In re Irani

487 F.2d 924, 180 U.S.P.Q. (BNA) 44, 1973 CCPA LEXIS 236
CourtCourt of Customs and Patent Appeals
DecidedDecember 6, 1973
DocketPatent Appeal No. 8986
StatusPublished

This text of 487 F.2d 924 (In re Irani) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Irani, 487 F.2d 924, 180 U.S.P.Q. (BNA) 44, 1973 CCPA LEXIS 236 (ccpa 1973).

Opinion

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claim 30 of application serial No. 824,378, filed May 7, 1969, entitled “An-hydrides of Organo-phosphonic Acids.” 1 We reverse.

Claim 30 reads:

An anhydride of amino tri (methylene phosphonic acid) having the formula N(CH2)3P306.

Appellants’ specification discloses that amino tri (methylene-phosphonic acid) is reacted with acetic anhydride to produce the anhydride of claim 30.

The rejection of the claim is based solely on two related grounds: (1) “an inadequate disclosure of utility” under 35 U.S.C. § 112; (2) lack of utility under 35 U.S.C. § 101.

The specification as filed contains the following statements about use (paragraph designations added):

[A] In general, the anhydrides of organo-amino-phosphonic acids of the present invention have utility in practically all fields wherein their amine and/or phosphonic anhydride properties can be utilized as well as fields employing an aqueous medium wherein they, by reversion to their corresponding organo-amino-phosphonic acids, have the same utility as such phosphonic acids.
[B] In particular, the compounds of’the present invention can find utility in such fields as sequestering or chelating agents, water-treating agents, stabilizers for peroxy compounds, soap anti-oxidants, additives in liquid soap, detergents and shampoos, agents for use in scouring wool cloth and cotton kier boiling, metal cleaning compositions, rubber and plastic compositions and polymeriza[925]*925tion processes, bottle washing compositions, dairy cleaning compositions, agents for use in pulp and paper processing, corrosion inhibitors, feed and vegetation supplements, herbicides, insecticides, metal treating compositions, electroplating, detergent builders for organic surfactant actives, lime soap dispersants, surfactants, film formers in hair sprays and soluble packages, dispersants for clays, drilling muds, paper pulps, inorganic and organic pigments, and cement slurries, bactericide potentiators, hair modifiers in shampoos, fertilizers, food and beverage acidulants, leavening agents, cheese emulsifiers, modifying agents in evaporated and condensed milk, flame retardants in paints, oil additives, gasoline additives, dentifrice compositions and the like.

These statements, when filed, did not apply only to the claim 30 compound. In context, they applied to all of the compounds disclosed by a generic formula and 27 specific examples of the preparation of various compounds.

Example 1, which is the specific disclosure of the compound of claim 30, concludes by stating:

[The] anhydride of amino tri (methy-lenephosphonic acid), N(CH2)3P306, [is] a white crystalline product melting in the range of 350-400°C(d) as compared to a melting point of 210-212°C(d) for crystalline amino tri (methylenephosphonie acid).2

We note that the “melting” range for the anhydride is much higher than that of the corresponding acid, a point relied on by appellants.

The brief of the Patent Office Solicitor accurately restates the questions on appeal as (a) whether the specification provides a “sufficient teaching of how to use the claimed compound” and (b) whether the claimed compound has “the utility required by 35 U.S.C. 101.” As to ground (a) the Patent Office argues that the specification contains no explicit disclosure of a specific use for the an-hydride, that the statement that the compounds of the invention “can find utility” in the listed “fields” of use would not enable one skilled in the art to use it, that the statements above quoted are merely suggestions of possible uses, that considerable experimentation would be necessary to discover in which suggested field the anhydride would actually be useful, and that the statute, § 112 (first paragraph), “requires disclosure of how to use the invention in full, clear, concise and exact terms.” As to (b), the Patent Office argues that “no adequately specific utility for the claimed anhydride has been asserted, shown, or demonstrated.” Therefore, it says, 35 U.S.C. § 101 has not been complied with.

Appellants argue that their admittedly novel and unobvious3 anhydride had utility at the time their parent application was filed, so that § 101 is complied with, and that the specification enables one skilled in the art to use the anhy-dride for at least one disclosed practical use, one such use being sufficient under the law. See In re Gottlieb, 328 F.2d 1016, 51 CCPA 1114 (1964). They say, “Any person skilled in the art can read the specification and practice the invention without experimentation.”

OPINION

We shall first consider the question of compliance with § 112.

The solicitor has not stated the statutory requirement correctly. It does not require disclosure of how to use the claimed invention “in full, clear, concise and exact terms,” as he states in his brief. What § 112 says of the required [926]*926description (emphasis ours) is that it shall be

* * * in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it [the invention] pertains, or with which it is most nearly connected, to make and use the [invention].4

The question before us is whether such a. description has been provided and to answer it we must take into consideration what those skilled in the art (chemists) already knew, or are presumed to have known, from the disclosures available to them before the filing date of appellants’ application.

For the following reasons, we are of the opinion that appellants’ specification meets the requirements of § 112. It teaches that the anhydride of claim 30, among others, when slurried in water is converted into the corresponding acid. That acid had known utility for at least two practical purposes prior to the date of appellants’ parent application as shown in two patents issued to Irani, Nos. 3,234,124 and 3,234,140, both issued Feb. 8, 1966. The ’124 patent discloses in detail the use of the acid as a sequestering agent to inhibit the precipitation of metal ions from aqueous solutions in commercial uses such as cotton dyeing and bleaching, metal cleaning, pulp and paper manufacture, and others. The T40 patent discloses the use of the acid as a stabilizer for aqueous peroxy solutions used for bleaching cotton, linen, jute, rayon, paper, and the like.

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Related

Application of David Gottlieb and Alfred Ammann
328 F.2d 1016 (Customs and Patent Appeals, 1964)

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Bluebook (online)
487 F.2d 924, 180 U.S.P.Q. (BNA) 44, 1973 CCPA LEXIS 236, Counsel Stack Legal Research, https://law.counselstack.com/opinion/in-re-irani-ccpa-1973.