Appeal No. 2003-0936
Application No. 09/532,806
examiner’s answer, by In re Angstadt, 537 F.2d 498, 503-04,
190 USPQ 214, 218-219 (CCPA 1976):
If . . . the disclosure must provide “guidance which
will enable one skilled in the art to determine,
with reasonable certainty before performing the
reaction, whether the claimed product will be
obtained” (emphasis in original), as the dissent
claims, then all “experimentation” is “undue,” since
the term “experimentation” implies that the success
of the particular activity is uncertain. Such a
proposition is contrary to the basic policy of the
Patent Act, which is to encourage disclosure of
inventions and thereby to promote progress in the
useful arts. To require disclosures in patent
applications to transcend the level of knowledge
of those skilled in the art would stifle the
disclosure of inventions in fields man understands
imperfectly, like catalytic chemistry. The Supreme
Court said it aptly in Minerals Separation, Ltd. v.
Hyde, 242 U.S. 261, 270-271 (1916) . . . :
. . . the certainty which the law requires
in patents is not greater than is reasonable,
having regard to their subject matter . . . .
Appellants have broadly disclosed a class of catalyst
complexes whose use they deem to be part of the
invention. But for this disclosure the public may
have been deprived of the knowledge . . . . In this
art, the performance of trial runs using different
catalysts is “reasonable,” even if the end result is
uncertain . . . .
We have considered the examiner’s explanations, appellants’
responses, and all the evidence for and against the patentability
of appellants’ claims under 35 U.S.C. § 112, first paragraph, in
light of the guidance our reviewing courts have provided.
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