Application of Alexander D. Argoudelis, Clarence De Boer, Thomas E. Eble and Ross R. Herr , 434 F.2d 1390 ( 1970 )

BALDWIN, Judge

(concurring).

I concur in the Court’s decision and believe that the reasoning of the principal opinion is sound. Nevertheless, the importance of this decision impels me to set forth some of my own reasons for finding appellants’ disclosure adequate under the first paragraph of 35 U.S.C. § U2.

It is difficult to conceive that at this late date. it has not been settled as to when (that is, at what time) a patent specification disclosure must comply with the requirements of the first paragraph of 35 U.S.C. § 112. In any event, such apparently is the case. I submit that the uncertainty in this area, while at least partially due to the use of loose language and/or thinking in deciding earlier cases, may also be the result of a general unawareness of the fact that the “enablement” provisions found in 35 U.S.C. § 112 (which, of course, antedate the present statute) actually play a dual role in our system of patent jurisprudence.

The first aspect of that role is to provide the assurance that the public will, in fact, receive something in return for the patent grant. This consideration is, of course, the full and complete disclosure of how to make and use the claimed invention. Thus, the patent adds a measure of worthwhile knowledge to the public storehouse. The incentive to give this added measure of knowledge to the public, which clearly promotes the progress of the “Useful Arts,” is the primary justification for the existence of the patent system.

It should be apparent, however, that this first aspect of the enabling disclosure requirements of section 112, requires only that the adequacy of the teaching disclosure be measured as of the issue date¹ of the patent. There is no sense in making an applicant publicly disclose any part of his invention, much less its very essence, before he has been assured that he will obtain the protection he is seeking in return for that disclosure.

Practical necessity, of course, requires that an application disclosure be intelligible and capable of evaluation before the issue date. The examining bodies of the Patent Office must be able to understand what a claimed invention is, how it works, what utility it might possess, before they can adequately determine whether such invention merits the grant of a patent. One of the considerations involved in that determination is whether the specification disclosure is such “as to enable any person skilled in the art to which [the invention] pertains, or with which it is most nearly connected, to make and use the same.” Under my analysis, however, the reference point for this particular evaluation would be the potential issue date of the patent. No rejection on this basis ² should be made unless the examiner is not satisfied that, at the time a patent would issue, its specification disclosure would be such that one of ordinary skill in the pertinent art reading that disclosure could understand the concept involved and would be able to make and use the invention claimed (aided only by his ordinary skill and such existent technology available to him as might be required by the disclosure).

Apart from considerations relating to the adequacy of the specification’s teaching disclosure, however, the examination of every patent application involves the further questions of whether the applicant is entitled to a patent under the provisions of 35 U.S.C. §§ 102 and 103. It is here where the enabling provisions of section 112 play their second role. Most, if not all, of the determinations involving the patentable merits of a claimed invention vis-a-vis the prior art require that the application filing date be regarded as the prima facie date of invention. This date is accorded not only to the particular claims which might be under consideration, but also to United States patents which might be asserted as references against those claims. Because the filing date is so important in determining patent rights, it is essential that there be no question that, at the time an application for patent is filed, the invention claimed therein is fully capable of being reduced to practice (i. e., that no technological problems, the resolution of which would require more than ordinary skill and reasonable time, remain in order to obtain an operative, useful embodiment). Manifestly, the usual way in which an applicant provides such assurance that his invention has reached the necessary stage of completion is to include in the application a specification disclosure which, in itself, fully constitutes “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 [to] set forth the best mode contemplated * * * of carrying out [the] invention.” Thus, when an application is examined for compliance with the enabling provisions of 35 U.S.C. § 112, and the application filing date is used as the reference point, the inquiry need not go beyond obtaining the assurance that the claimed invention has been fully completed (in the sense explained above).

In the present case there is no question that, at the time the patent issues, one of ordinary skill in this art will be able to make and use the claimed antibiotic compounds from the written description included in the specification coupled only with his ordinary skill and the critical microbes, which will then be readily available to him. Appellants have thus satisfied the first aspect of my analysis. Also, the procedure set up by appellants, including the contracted storage of the microbes with the public depository, when coupled with the written disclosure contained in the specification, satisfies me that anyone having ordinary skill in this art would recognize that the invention claimed was fully completed as of the filing date of the application. For these reasons, I find that appellants’ specification fully complies with the requirements of the enabling provisions of the first paragraph of 35 U.S.C. § 112.

1 . I am aware of broad statements in opinions to the effect that the teaching of the patent must be such as to “add to the sum of public knowledge” at the time the patent expires. Insofar as they might be interpreted as suggesting that a patent disclosure need not be enabling until the patent expires, such statements are incorrect and inapplicable to the issues here.

2 . Before too much concern is aroused at this point, it should be remembered that the “new matter” provision of 35 U.S.C. § 132 would still be available to prevent issues such as that involved here from arising very often. In most cases, the proscription against new matter will keep an applicant from amending a speeification which is not “enabling” at the filing date in order to make it such at any future date.