Application of Glenn T. Seaborg
328 F. 2d 996 (1964)
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Rule of Law:
A prior art reference does not anticipate a patent claim for a new product if the product was only produced inherently in the prior art process in minuscule, undetectable, and unrecognized quantities. For a prior publication to be an anticipation, it must contain adequate directions for the practice of the invention.
Facts:
- An appellant filed a patent application for a new transuranic element, atomic number 95, now known as Americium.
- The application disclosed methods for synthesizing the element, including by bombardment of plutonium or in a neutronic reactor.
- A prior patent by Fermi et al. described a nuclear reactor but did not mention element 95 or Americium.
- The Patent Office argued that the operation of the reactor described in the Fermi patent would have inherently produced Americium.
- Calculations showed that the maximum amount of Americium that could have been produced in the Fermi reactor was one-billionth of a gram.
- This minuscule amount, if produced, would have been distributed throughout 40 tons of intensely radioactive uranium fuel, rendering it completely undetectable with available technology.
Procedural Posture:
- The appellant filed patent application Serial No. 692,730 for element 95.
- The patent examiner rejected claims 1 and 2 of the application as unpatentable over the prior U.S. Patent to Fermi et al.
- The appellant appealed the examiner's final rejection to the Patent Office Board of Appeals.
- The Board of Appeals affirmed the decision of the examiner.
- The appellant then appealed the Board's decision to the United States Court of Customs and Patent Appeals.
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Issue:
Does a prior art patent, which describes a process that may have inherently produced a minuscule and undetectable amount of a new substance without any recognition of the substance's existence, anticipate a subsequent patent claim for that substance?
Opinions:
Majority - Smith, J.
No. A prior art patent that may have inherently produced a new substance in minuscule, undetectable, and unrecognized amounts does not anticipate a later claim to that substance. The court rejected the Patent Office's broad application of the 'inherency doctrine.' To serve as an anticipation, a prior patent must 'bear within its four corners adequate directions for the practice of the patent invalidated.' The Fermi patent offered no such directions because it did not recognize the existence of element 95, let alone describe how to produce, identify, or isolate it. The mere possibility that an undetectable trace amount of Americium was accidentally created does not mean the element was previously known or invented, and therefore does not preclude a patent for its actual discovery and characterization.
Analysis:
This decision significantly limits the doctrine of inherency in patent law, particularly for newly discovered chemical compositions. It establishes that the accidental, unrecognized, and undetectable creation of a substance does not qualify as prior art that anticipates a later patent by the person who actually discovers, isolates, and identifies the substance. The ruling protects inventors of new materials from having their work invalidated by prior processes that may have produced trace, unappreciated amounts of the same material. This precedent is crucial in fields like chemistry and biotechnology, where complex reactions can create numerous unknown byproducts in trace quantities.
