Robert C. Watson, Commissioner of Patents v. Frederick C. Bersworth and the Dow Chemical Company

251 F.2d 898, 102 U.S. App. D.C. 187

• Court: Court of Appeals for the D.C. Circuit
• Decided: February 28, 1958
• Docket: 13566
• Status: Published

Opinions

EDGERTON, Chief Judge.

This is a suit under 35 U.S.C. § 145, 66 Stat. 803, § 1, for a patent on certain claims of an application filed in the Patent Office in 1951. The Patent Office rejected the claims as anticipated by certain references, namely two patents issued in 1947. The District Court overruled the Patent Office and the Commissioner of Patents appeals.

In 1946 appellees filed an application, Serial No. 657,893, which became Patent No. 2,524,218. If the disclosure in that application would have supported claims like those now in suit, had they been made then, the doctrine of “continuity” gives these claims the benefit of the filing date of that application and so entitles them to priority over the references. The Patent Office tribunals ruled that the 1946' disclosure would not have supported claims like these. The District Court held the contrary.

The claims are for a chemical compound described by specific formula, and for the basic metal salts of this compound. The 1946 application did not disclose the specific formula of this compound. According to undisputed testimony in the District Court, a general formula disclosed by the 1946 application “encompassed within [its] scope * * * a large number ”, possibly thousands, of compounds, including the one now specifically claimed; “a small number of known, but many unknown” compounds; chemists can “derive” the specific formula now claimed, and many others, from the general formula; “You derive the compound [now claimed] by assigning certain values to the m variables set forth in the general formula” disclosed in 1946, but “there are many other compounds that would be derived in the same way * * A witness for appellees who testified, on direct examination, that the 1946 “formula, with the explanatory disclosure, specifically dictates the formula” now claimed, testified on cross-examination that “One is led to other compounds as well” and that he “had a definite goal in mind” when he picked a particular “substituent”.¹

The difference between the Patent Office and the District Court, and the issue before us, i's not factual. As the Commissioner of Patents says in his brief, “There is little, if any, disagreement as to the salient pertinent facts of this case.” He does not deny that the appellees are entitled to a patent if their 1951 claims are entitled to priority over the 1947 references. The appellees do not contend that they are entitled to a patent if their claims are not entitled to priority over those references. The question is not whether an invention has been made. The question is whether the appellees are entitled to claim the invention. The answer turns on the relation between the words of the 1946 application and the words of the 1951 claims. And “the words of a patent or a patent application, like the words of specific claims therein, always raise a question of law for the-court and may not be determined by the opinion of experts. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S.Ct. 9, 74 L.Ed. 147 * * Minnesota Mining & Mfg. Co. v. Carborundum Co., 3 Cir., 155 F.2d 746, 749. The 1946 disclosure would or would not have supported claims like the ones now made, according to whether such a general disclosure does or does not, in respect to such specific claims, meet the legal requirement that “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 * * * to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” 35 U.S.C. § 112. (Emphasis added.) “This is a question of law, open to this court, precisely as it was open to the court below.” Minnesota Mining case, supra. On this appeal the Patent Office does not question, and we do not question, any of the testimony of appellees’ witnesses. But we answer the question of law in the negative.² As a matter of law, an applicant cannot “ ‘include and claim a specific thing not originally described, merely because it comes within the scope of the genus before disclosed.’ ” In re Mraz, 36 App.D.C. 435, 438. An applicant “under the circumstances of this case, cannot preempt the entire field * * * by broadly teaching that useful results may be obtained by mixtures and combinations of a broad general group of materials without specifically naming such materials * * * or in some other manner pointing out his invention as is required by statute * * In re Collins, 75 F.2d 1000, 1002, 22 C.C.P.A., Patents, 1053. Minnesota Mining case, supra.

Reversed.

1 . Since the Patent Office tribunals said nothing to the contrary, although the Commissioner’s brief suggests a doubt, we assume in appellees’ favor-without deciding that the testimony meant the 1946 disclosure not only enabled chemists to write the formula now claimed but also enabled them to make the compound now claimed; despite- the fact that it is not dear, to us non-chemists, that either the testimony or the District Court’s findings meant this. One of appellees’ witnesses testified without dispute that there “may be years of research necessary in order to make many” of the specific compounds encompassed within the scope of the general disclosure.

2 . If it were a question of fact the result would be the same. A mere preponderance of evidence, if any, would not justify the District Court in reversing a factual finding of the Patent Office. Concerning the factual question whether patent claims are inventive, for example, it has long been clear that “ ‘A mere preponderance of evidence’ is not enough to justify reversing the Patent Office and deciding that an applicant is entitled to a patent.” Abbott v. Coe, 71 App.D.C. 195, 197, 109 F.2d 449, 451. Even when, as often happens, the District Court has before it more evidence than the Patent Office had, it remains true that on a factual issue “the Patent Office finding must bo accepted if it is ‘consistent with the evidence,’ the Patent Office being an expert body pre-eminently qualified to determine questions of this kind.” Esso Standard Oil Co. v. Sun Oil Co., 97 U.S. App.D.C. 154, 157, 229 F.2d 37, 40. This includes the evidence before the court and the evidence before the Patent Office. On a factual issue the question “is whether all competent evidence, ‘new’ and ‘old’, offered to the District Court carries ‘thorough conviction’ that the Patent Office erred.” Minnesota Mining & Mfg. Co. v. Carborundum Co., 3 Cir., 155 F.2d 746, 748. If the District Court overrules a factual finding that is consistent with the evidence, the court is clearly wrong and we must reverse. In the present case, it appears to us that the Patent Office finding is not only consistent with the evidence but does not conflict with any of the evidence.