In re Nelson (280 F.2d 172, 1960)

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims of appellants’ application for patent, serial No. 259,-014, filed November 29, 1951, on “14-Hydroxy Androstenes.”

The original opinions in this case were handed down on June 24, 1958. The court’s decision reversed the rejection of the claims. After extensions of time granted on motion and stipulations, the Patent Office filed a Petition for Rehearing on August 25, 1958 and appellants’ objections thereto were filed September 29, 1958. We granted the petition on April 17, 1959. Appellants and the Patent Office filed additional briefs on October 19 and 20, 1959. Amicus curiae briefs were received during September from the American Patent Law Association and the Connecticut Patent Law Association and the Philadelphia Patent Law Association filed a “Statement” saying that it approved and adopted the position taken by the American Patent Law Association in its amicus brief. All amici supported appellants’ position and urged us to adhere to our decision. Re-argument was heard November 2, 1959, counsel for appellants, the American and Connecticut associations, and the Patent Office participating.

In accordance with our usual practice, our former opinions have been withheld from formal publication. They are hereby withdrawn. The following is the opinion of the court. While we have revised our first opinion our former decisions are unchanged.

Introduction

The legal issue in this case has evinced the changeability of a chameleon, exhibiting sometimes subtle and sometimes complete changes of color. In introducing the subject we can, however, say with complete certainty that the ultimate question is whether the disclosure "of appellants’ application is sufficient to support a patent. There is no rejection on prior art, no question of novelty or un-obviousness or that the invention is in a category of subject matter on which patents can be granted. Utility seems to be involved but the precise Patent Office position on this point is still obscure.

Appellants have disclosed a group of novel compounds and how to make them. They have also said certain things about what can be done with them and how to do it. Appellants and the amici contend that this disclosure is sufficient to support a patent and the Patent Office says it is not. Who is right depends on what the specification says either about the utility of the invention or how to use the novel compounds, or both, and what the law is on these matters.

The law, at least in its statutory form, can be most simply stated. In Title 35 of the United States Code, section 101 reads, in pertinent part, as follows:

“Whoever invents or discovers any new and useful * * * composition of matter * * * may obtain a patent therefor, subject to the conditions and requirements of this title.”

This limits the grant of patents to “useful” inventions and this is the “utility” requirement of the statute. We must also consider section 112 which says [emphasis ours]:

“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 or carrying out his invention.”

In section 112 there are the “how to use” and the “best mode” requirements about which much of the argument in this case revolves.

The Disclosure

The claims on appeal are directed to new steroid compounds, claims 1 and 10 being typical and reading:

“1. A C-19 14 a -hydroxy-an-drostene wherein the double bond is attached to the carbon atom 5.

“10. 14 a-hydroxy-4-androstene-3, 17-dione.”

Claim 10 was copied by appellants from Murray et al. patent No. 2,662,089 (issued on an application filed after appellants filed) in order to provoke an interference. Appellants’ specification contained, when filed, the following statements about the use of the claimed compounds [emphasis ours]:

“The cardiac glycosides, such as digitoxigenin and the like, comprise steroids which contain an OH-group in the 14-position. Important physiological properties are attributed to these steroids. However, synthetically produced C-19 H-hydroxy-androstenes wherein the double bond is attached to carbon atom 5 have not heretofore been known.

“A primary object of the present invention is the embodiment of such synthetically-produced compounds, corresponding to formula I supra. These new compounds are valuable intermediates in the preparation of steroids wherein a hydroxyl group is present in the 14-position, and of steroids containing a 14,15-double bond, and -of steroids the synthesis of which requires such groupings.

* * * * * * “Conversion of the androstene compounds to produce analogous saturated 14-hydroxy steroids is effected by hydrogenating the A 5-double bond, for example by catalytic methods.”

The specification also teaches that the acyloxy groups in the 3- and 11- positions of appellants’ compounds can be hydrolyzed to the corresponding 3-hydroxy groups and the latter oxidized to keto groups to produce the corresponding ke-tone compounds. It also teaches how the 17-keto group can be reduced to a hydroxyl group with the aid of an agent such as catalytic hydrogen, sodium boro-hydride, lithium aluminum hydride and the like, following these statements with illustrative reaction schemes setting forth the conversions by means of graphic formulae.

The Rejection

The board described the rejection thus: “Claims 1 through 7 and 10 have been rejected as lacking utility.” [Emphasis ours.] This is the rejection it affirmed. The examiner’s final rejection of July 26, 1954, which the board .had under review, said [emphasis ours]:

“Claims 1 to 7 and 10 are finally rejected for lack of utility for the reasons fully explained in the last Office letter. * * *

“ * * • * in view of the fatally defective nature of the present application, applicants are not entitled to a patent * *

The examiner’s Answer, on the appeal to.the board, after stating again that the claims were under rejection “as lacking in utility,” also said, inter alia,

“The applicants fail to show how these intermediates can be converted to products having known useful properties. The■ mere allegation that they are useful for conversion is not sufficient. * * * there is no justification for assuming that a conversion product of the claimed compound will be useful. * * * the disclosure is fatally defective with respect to [the] utility requirement of 35 USC [§] 112 * * [Emphasis ours.]

Since the board affirmed the examiner’s rejection, that, of course, is the ground of rejection which is before us for consideration. In re Scharwath, 164 F.2d 609, 35 CCPA 763.

The essence of the board’s reasoning in affirming the foregoing rejection is contained in the following excerpts from its first opinion:

“There is no assertion in appellants’ specification that they are able to synthesize an active digitalis gly-coside from their intermediate, nor any other specific physiological active steroid having a hydroxyl group in the 14-position or with a 14,15-double bond. [Emphasis ours.] ******

“ * * * there is no evidence before us that * * * appellants ever produced a useful steroid from their * * * intermediates. [Emphasis ours.]. ******

“35 U.S.C. [§] 112 requires an applicant to fully describe how to make and use- the invention and to set forth the best mode contemplated of carrying it out. Clearly appellants have failed to do that in this case because they haye not shown how their intermediate may be used to prepare a single useful steroid. We are unable to conclude that a method for doing this would be obvious to one skilled in the art. [Board’s emphasis.]

“There are of course cases where no utility need be disclosed because it is either obvious or well known. However an incomplete disclosure, in a case (as herein) where utility is necessary to a full disclosure of the invention, is no better than one totally lacking it because both fail to comply with 35 U.S.C. [§] 112.” [Emphasis ours.]

The board, as did the examiner, cited the 1950 decision of this court in In re Bremner et al., 182 F.2d 216, 37 CCPA 1032 and seemed to regard that case as the controlling authority supporting its point of view. We shall point out later why the Bremner case fails to support the rejection.

The Issue

It will be seen from the foregoing that the rejection was variously predicated on lack of utility, failure to show utility, failure to allege sufficient utility, failure to comply with the “utility requirement of 35 USC [§] 112” and failure to disclose how to use the claimed compounds. Out of this congeries of explanations as to why the specification was allegedly “fatally defective” the Patent Office solicitor distilled the statement in his original appeal brief that

“ - * * it is clear that what is meant is that the claims are based upon a specification which fails to contain a written description of the manner of using the invention, as required by Section 112 of Title 35 U.S.C.” [Emphasis ours.]

That is clear, standing by itself, but the brief then proceeds to argue that the real defect was that “applicants fail to show how these intermediates can be converted to products having known useful properties,” for which reason they were not shown by the disclosure to be useful. It argues that it is on the utility of the compounds into which appellants’ compounds were to be converted that the case hinges “since a compound which acts as an intermediate for the production of another compound having no utility can hardly be said to be useful in the sense of the law.” [Emphasis ours.] Thus does the brief inextricably tie up the question of disclosure of how to use under section 112 with the issue of utility under section 101.

The Patent Office petition for rehearing charged us with an extrajudicial excursion, in our original opinion, into the meaning, and bearing on the issues, of section 101 and with rendering an advisory opinion thereon which we should withdraw. We considered section 101 because we were of the opinion — after an intensive, not to say frustrating, effort to determine on what ground the claims were rejected — that the examiner’s rejections and the board’s reasoning involved a scrambling of the separate statutory requirements that an invention must be useful to be patentable, and that an application, to comply with the law, must adequately teach those skilled in the art how to make and use the invention. We are still of that opinion and we therefore as requested in the Connecticut amicus brief, retain in our opinion an expression of our views as to the bearing on the issues of both sections 101 and 112. As the American amicus brief points out, the Patent Office has taken the position that appellants have not complied with section 112, but it has not shown why this is so except by objection to the kind of utility disclosed, which presents an issue under section 101 rather than under section 112.

In its brief on the rehearing the Patent Office again stated the issue to be solely whether the requirements of section 112 have been complied with, but its interpretation of this issue in the brief as a whole and in oral argument is that section 112 has not been complied with because the specification does not show that a patentable invention has béen made for the reason that the invention described is not useful under section 101, or at least that such use as is disclosed is insufficient under section 101. Mention of section 101 has been avoided but this construction is inescapable.

The issue here cannot, therefore, be restricted to a consideration of the disclosure of how to use, under section 112, and necessarily requires a consideration of the requirement of section 101 that an invention, to be patentable, must be “useful.” Section 112, as we view the matter, does not deal with “utility,” in the sense in which that term is used in patent law to define a prerequisite to patentability.

Utility

The grand objective of the patent system, as stated in the Constitution, is to promote the progress of the useful arts. Presumably for this reason, our patent statutes, from the very beginning in 1790 to the latest act of 1952, have made it a prerequisite to patentability that the invention be new and useful. However, it has never been a requirement for patentability that there must be any particular degree of utility. To cite a very early text, Curtis On Patents (1849) says, in section 16,

“The word ‘useful’ is not supposed to be used, for the purpose of establishing general utility as the test of a sufficiency of invention to support a patent. It had been held, upon the use of the same word in the old patent act of 1793, that it was used merely in contradistinction to what is frivolous or mischievous to society. This term was held to be satisfied, if the alleged invention was capable of use, and was not injurious to the well-being, good policy or sound morals of society. [Cases cited: Lowell v. Lewis, [Fed. Cas.No.8,568], 1 Mas. 186; Bedford v. Hunt, [Fed.Cas.No.1,217] Ibid. 303; Knease [Kneass] v. Schuylkill Bank, [Fed.Cas.No.7,875] 4 Wash.[C.C.] 9, 12.]” [Emphasis ours.]

Again in section 28, after repeating the substance of the above, he says,

“ * * * it follows that every invention, for which a patent is claimed, must be, to a certain extent, beneficial to the community; it must be capable of use, for some beneficial purpose; but when this is the case, the degree of utility, whether larger or smaller, is not a subject for consideration, in determining whether the invention will support a patent. But it is obvious that the capability of use for some beneficial purpose is a material element in determining whether there is a sufficiency of invention to support a patent; the force of the word ‘useful,’ introduced into the statute in connection with the epithet ‘new,’ being to determine whether the subject-matter, upon the whole, is capable of use, for a purpose from which any advantage can be derived to the public. General rules will not decide this question in particular cases, but the circumstances of each case must be carefully examined, under the light of the principles on which general rules are founded.” [Emphasis ours.]

See also Curtis on Patents, 4th Ed., (1873) § 106, page 111, enlarging on this theme.

Looking at an even earlier text, written contemporaneously with the patent act of 1836, The Law of Patents For Inventions by Phillips (1837) in Chapt. VII, Subjects of Patents, Sec. 14, Usefulness (10 pages), the following, quoting a classic statement of Mr. Justice Story, appears (p. 139):

“All that the law requires is, that the invention should not be frivolous, or injurious to the well-being, good policy, or sound morals of society. The word useful, therefore is incorporated into the act in contradistinction to mischievous, or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention. But if the invention steers wide of these objections, whether it be more or less useful is a circumstance very material to the interest of the patentee, but of no importance to the public. If it be not extensively useful it will silently sink into contempt and disregard. (From Lowell v. Lewis, 1 Mason 182.) [Fed.Cas.No.8568]”

This passage was quoted with approval by the Circuit Court of Appeals, Third Circuit, in 1947 in Cusano v. Kotler, 159 F.2d 159.

Again at page 142, with footnote references to texts and cases, the above author, Phillips, says:

“The requisite of usefulness has been sometimes contrasted with frivolousness, and the multiplicity of patents for trivial subjects has been occasionally deprecated by judges. An invention may be slight and trivial as being so obvious and apparent that it cannot be considered a discovery, or it may be trivial or frivolous in respect to its effect upon industry and production. A defect in the first sense renders the patent void as being for a subject that is not an invention. But an invention of a very slender character in the latter sense is still the subject of a patent, since it is not the province of the court to go into the question of the extent or degree of usefulness. It is enough that the invention is useful; how useful it may be is immaterial.” [Emphasis ours.]

In EL C. Merwin’s text, Patentability of Inventions (1883), p. 75 the author states:

“As to the term ‘useful’, the courts have construed the condition expressed by it so liberally that it almost never serves to defeat a patent. The following rules are clearly established: 1. Anything is useful which is not entirely frivolous or worthless, and not detrimental to the well-being, or injurious to the morality of the public, or of a character to mislead the public to its disadvantage. 2. The subject of a patent need not be the best or most useful of its kind. It is necessary only that it should be useful in some degree. 3. It need not possess all the usefulness, or the degree of usefulness, claimed for it in the patent. 4. In a suit for infringement, if the defendants are proved to use the invention described in the patent sued on, they are estopped to deny its utility.” [Emphasis ours.]

The classic text, Robinson on Patents (1890), says:

§ SU1. Degree of Utility Immaterial.

“When actual utility exists, its degree is unimportant. However slight the advantage which the public have received from the inventor, it offers a sufficient reason for his compensation; and as he could withhold this slight advantage if he chose, his surrender of it to the public places him on the same plane of merit with every other inventor. Nor is it necessary that this advantage, whether great or small, should flow directly from his art or instrument, considered by itself. For though it is a mere improvement upon pre-existing arts or instruments, or is incapable of serving any purpose except as an integral part or element of some different invention, or embodies an idea or means whose highest value can be realized only by advancing it to a more perfect state of development, it still has an inherent usefulness which satisfies this requirement of the law.” [Emphasis ours.)

In a somewhat later text published at the turn of the century, Walker on Patents (5th Ed., 1904), the chapter on “Utility” occupies but six and a half pages (pp. 97-103). The concepts set forth are simple. “To possess utility, a thing or a process must be capable of producing a result, and that result must be a good result.” “Utility is absent from all processes and devices which cannot be used to perform their specified functions, and patents for such subjects are therefore void.” “Whatever is beautiful is useful, because beauty gives pleasure, and pleasure is a kind of happiness, and happiness is a kind of utility.” Hence, a thing having no function except to decorate is useful, Magic Ruffle Co. v. Douglas, 1863, Fed.Cas.No.8,948, 2 Fish.Pat.Cas. 330. On the contrary, “Utility is negatived if the function performed by an invention is injurious to the morals, the health, or the good order of society.” “A patent is prima facie evidence of utility * *

Rogers on Patents (1914), Vol. 1, page 9, says:

“ * * * utility in its broadest sense approaches a presumption more nearly than any other point recited in the statute and is seldom questioned by the courts or the Patent Office, except in cases of perpetual motion, or in such cases, for example, as a spark arrester which works so vigorously as to stop the locomotive, or some visionary, obviously impracticable, scheme.”

As a subsequently arising example of the last- mentioned type of invention one might cite the decision of this court in In re Oberweger, 115 F.2d 826, 828, 28 CCPA 749, wherein an invention consisting of various admixtures of such things as-bone marrow, aromatic oils and alcohol was held lacking in utility for the specified purpose of growing hair. The court referred to the fact that the “concoction * * * belongs to a class of compositions which from common knowledge has long been the subject matter of much humbuggery and fraud.” See also In re Perrigo, 48 F.2d 965, 18 CCPA 1323.

In National Slug Rejectors, Inc. v. A. B. T. Mfg. Corporation, 7 Cir., 164 F.2d 333, 335, Judge Evans said, “It is not the extent of the utility that governs, but the existence of some utility,” citing 40 Amer.Jurisprudence, “Patents,” Sec. 43, p. 546. Quite recently, citing a number of authorities, the District Court for the Southern District of New York held that “Absent proof of total incapacity the defense of non-operativeness or non-utility is not available.” Technical Tape Corp. v. Minnesota Mining & Mfg. Co., 143 F.Supp. 429, 438.

Now let us consider whether applicants’ new compounds, the claimed C-19 14-hydroxy-androstenes, are “useful” by the legal standards discussed above, according to the information which is given to us in the specification. We are told thereby that these are new androstenes, of a kind never before made (and novelty has not been questioned), that they are of a type which steroid-chemists can use in well-known reactions to produce steroids of a class at least some members of which are known to have useful therapeutic properties. Appellants’ point is that new “building blocks” of value to the researcher have been supplied which have utility as intermediates in the search for cheaper and shorter routes to the synthesis of steroids having therapeutic or similar ultimate utility.

The Patent Office position seems to have been that there must be a presently existing “practical” usefulness to some undefined class of persons. We have never received a clear answer to the question “Useful to whom and for what?” Surely a new group of steroid intermediates is useful to chemists doing research on steriods, and in a “practical” sense too. Such intermediates are “useful” under section 101. They are often actually placed on the market tie-fore much, if anything, is known.as to what they are “good” for, other than experimentation and the making of other compounds in the important field of research. Refusal to protect them at this stage would inhibit their wide dissemination, together with the knowledge of them which a patent disclosure conveys, which disclosure the potential protection •encourages. This would tend to retard rather than promote progress.

The new androstenes, being useful to ■research chemists for the purposes disclosed by appellants, are clearly useful to .society and their invention contributes to the progress of an art which is of great ■potential usefulness to mankind. They .are new steroids which in known ways can be made into other steroids, thus furthering the development of this useful art.

We conclude that the claimed compounds are “useful” within the meaning •of section 101 and that there is a disclosure of the utility in the specification. We turn now to the question of whether the disclosure of “the manner * * * •of * * * using” is sufficient to comply with section 112.

Requirements of Specification

Of equal antiquity with the utility requirement of the statute is that for a specification which, as provided by .section 2 of the act of 1790, 1 Stat. 110, was required to be of such particularity .as would “enable a workman or other person skilled in the art * * * to ■make, construct, or use” the invention. No real alteration has been made in this, law through the years or in the fundamental reasons for requiring such a specification, which are two. Quoting again from Phillips, The Law of Patents (p. :233):

“There are two objects in view in making a specification. As the law grants the patentee a monopoly, and not only awards damages, but inflicts a penalty for violation of the ■exclusive privilege, it very equitably requires that the invention shall be .so described in the specification, that •every person may, by examining it, know what the patentee claims, and