In re Glass
1974 CCPA LEXIS 194, 492 F.2d 1228, 181 U.S.P.Q. (BNA) 31 (1974)
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Rule of Law:
The sufficiency of a patent application's disclosure to enable a person skilled in the art to practice the invention, under 35 U.S.C. § 112, first paragraph, must be judged strictly as of the application's filing date, without reliance on later-published information.
Facts:
- An applicant, Mr. Glass, filed patent application serial No. 664,879, titled “Whiskers,” claiming both apparatus and method for artificially growing long, needle-like, linear crystals from the vapor phase of crystal-producing materials.
- The described apparatus included a heated chamber with a mixer zone positioned above a heated vertical cylinder, which contained a precipitating zone, and an electron gun beneath the cylinder.
- The method involved introducing ingredients A, B, C, and D into the mixer zone, thoroughly mixing them, and then passing the mixture downwardly into the heated vertical cylinder and precipitating zone.
- The application claimed to create an “optimum supersaturation zone” within the precipitating zone, where conditions were hotter at the top and cooler at the bottom, without needing to exactly control temperature, pressure, and supersaturation.
- The patent specification's general description did not disclose specific details such as the exact temperatures, the nature of the temperature gradient, required pressures, flow rates, or the particular identity of “ingredients” A, B, C, and D, nor did it provide any specific examples of operation.
- The specification mentioned an electron gun discharging electrons and an electric discharge point aiding crystallization but failed to disclose the intensity of the electrostatic charge or the manner in which it aided crystallization.
Procedural Posture:
- An examiner rejected all remaining claims in Mr. Glass's patent application serial No. 664,879, under 35 U.S.C. § 112, first paragraph, citing inadequate disclosure for failing to enable a person skilled in the art to practice the invention and for failing to set forth the best mode.
- The examiner also rejected certain claims for indefiniteness under 35 U.S.C. § 112, second paragraph, and some claims under 35 U.S.C. § 103 based on prior art.
- The Patent Office Board of Appeals affirmed the examiner’s rejection regarding the § 112, first paragraph, ground (incomplete disclosure), but reversed the rejection as to the clarity of the term "whisker-producing material."
- During the proceedings before the Board, Mr. Glass, the appellant, introduced four patents issued after his filing date (but with earlier filing dates) in his reply brief, arguing they demonstrated the knowledge of the art at the time he filed.
- The Board of Appeals, as the intermediate appellate court, refused to consider these patents as showing the state of the art as of Mr. Glass's filing date, reasoning that they issued after his filing date.
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Issue:
Does a patent application's disclosure satisfy the enablement requirement of 35 U.S.C. § 112, first paragraph, if it is not sufficient at the time of filing but could be made sufficient by relying on publications issued after the filing date?
Opinions:
Majority - Rich, Judge
No, a patent application's disclosure does not meet the enablement requirement if it relies on later-published information to become sufficient; its sufficiency must be judged solely as of its filing date. The court affirmed the Board's rejection, holding that the specification was insufficient to support either the apparatus or the method claims because it did not sufficiently teach how to use the apparatus or practice the method. The disclosure was found to be too general and vague, lacking specific details regarding process parameters, operating conditions, or particular materials, thus leaving too much to conjecture, speculation, and experimentation for a person skilled in the art to practice the invention. The court definitively ruled that application sufficiency under 35 U.S.C. § 112, first paragraph, must be judged as of its filing date, stating that an applicant's obligation is to supply enabling disclosure without reliance on what others may publish later. This distinction was underscored by contrasting § 112's enablement purpose with § 102(e)'s prior art rationale, citing Alexander Milburn Co. v. Davis-Bournonville Co., and noting the prohibition against 'new matter' under 35 U.S.C. § 132. The court also clarified that the failure to set forth any operative mode constituted non-enablement, which is distinct from the 'best mode' requirement, as defined in In re Gay, which is concerned with concealing a preferred embodiment rather than a complete lack of disclosure.
Concurring - Miller, Judge
Yes, the majority's reasoning is largely correct that the reduction to practice requirement of 35 U.S.C. § 112 must be satisfied as of the filing date, but the broader rule regarding public disclosure needs clarification. Miller, Judge, concurred with the majority's reasoning and result but emphasized the need to clarify the majority’s broadly stated rule concerning disclosure sufficiency, particularly in its citation of In re Argoudelis and In re Hawkins. He explained that 35 U.S.C. § 112 encompasses two separate requirements: (1) the 'reduction to practice' requirement, which demands that the invention be fully developed and capable of being made or used as of the filing date; and (2) the 'public disclosure' requirement, which mandates that the specification enable those skilled in the art to practice the invention once the patent issues. Judge Miller stressed that while the majority’s rule correctly applied to the 'reduction to practice' aspect, it should not be misinterpreted to imply that public access to the invention or its components is required prior to the patent's issue date to meet the 'public disclosure' requirement, as clarified by Argoudelis and Hawkins.
Analysis:
This case is highly significant for patent law as it definitively establishes the 'as of the filing date' standard for judging the enablement requirement under 35 U.S.C. § 112, first paragraph. It prevents applicants from retrospectively curing deficient disclosures with later-published information, reinforcing the principle that a patent application must represent a complete and fully described invention at the moment of constructive reduction to practice. The opinion also provides a crucial distinction between 'enablement' (teaching how to make and use the invention generally) and 'best mode' (disclosing the inventor's preferred embodiment), guiding future courts and practitioners in applying these separate statutory requirements.
