Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`" KeyCite Yellow Flag — Negative Treatment
`Not Followed as Dicta
`Plant Genetic Systems, N.V. V. DeKalb Genetics
`Corp..
`Fed.Cir.(Conn.),
`January 13, 2003
`
`559 F.2d 595
`United States Court of Customs and Patent Appeals.
`
`Application of John Paul
`HOGAN and Robert L. Banks.
`
`Patent Appeal No. 76-641.
`I
`July 28, 1977.
`
`Patent applicant appealed from decision of the Board of
`Appeals, Serial No. 181,185, affirrning examiner's rejection
`of various claims of patent application for solid polymers of
`olefins. The Court of Customs and Patent Appeals, Markey,
`Chief Judge, held that: (1) in view of filing of continuous
`applications certain claims were entitled to benefit of filing
`date of earliest application; (2) ancestral applications must be
`considered in determining propriety of rejection under statute
`relating to making of enabling disclosures in specifications;
`(3) where application was entitled to benefit of earlier
`filing date, a later state of art could not be improperly
`employed to determine application's compliance with statute
`on specification content, and (4) to be entitled to benefit of
`earlier filing date there must have been a continuous chain
`of copending applications satisfying statutory requirement on
`specifications.
`
`Modified and remanded.
`
`Miller, J., filed an opinion concurring in part.
`
`Attorneys and Law Firms
`
`*597 E. Eugene Innis, Bartlesville, 0kl., Young & Quigg,
`Washington, D. C., attys. of record, for appellants.
`
`the
`for
`Joseph F. Nakarnura, Washington, D. C.,
`Commissioner of Patents, Fred E. McKelvey, Washington, D.
`C., of counsel.
`
`Before MARKEY, Chief Judge, and RICH, BALDWIN,
`LANE and MILLER, Judges.
`
`WESTLAW
`
`Opinion
`
`MARKEY, Chief Judge.
`
`This appeal is from the decision of the Patent and Trademark
`Office (PTO) Board of Appeals affir1ni11g various rejections,
`under 35 U.S.C. ss 102, 103, 112 (first paragraph), and
`132, of claims 13-15 in appellants’ application No. 181,185
`filed September 16, 1971 (the 1971 application) for “Solid
`
`Polymers of Olefins.” 1 A main issue involves use of a “later
`state of the art” as evidence to support a rejection.
`
`The 1971 application is said to be a continuation of
`application No. 648,364 filed June 23, 1967 (the 1967
`application),
`in turn a “divisional” of application No.
`
`558,530 filed January 11, 1956 (the 1956 application)2.
`The 1956 application is a continuation—in—part of application
`No. 476,306 filed December 20, 1954 and application No.
`333,576 filed January 27, 1953 (the 1953 application).
`
`We affirm in part, reverse in part, and remand with respect to
`certain rejections.
`
`The Claims
`
`Although the 1971 application discloses several polymers, the
`
`claims are limited: 3
`
`13. A normally solid homopolymer of 4-methyl-1-pentene. 4
`
`*598 14. A polymer of claim 13 having a melting point in
`the range of 390 to 4250 F.
`15. A polymer of claim 13 which is wax-like and thermally
`stable as evidenced by substantially no decomposition at
`
`temperatures below about 7000 F. as shown by Figure 5. 5
`
`The Disclosures
`
`Appellants assert that, under the provisions of 35 U.S.C. s
`
`120, 6 claims 13 and 15 are entitled to the benefit ofthe filing
`date of the 1953 application and claim 14 is entitled to the
`benefit of the filing date of the 1956 application.
`
`The 1953 application discloses solid polymers made from I-
`olefin monomers having a maximum chain length of eight
`carbon atoms and no branching nearer the double bond than
`the 4-position. Several olefin monomers which form such
`
`1
`
`USAA 1020
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`polymers are disclosed: ethylene, propylene,
`pentene, l-l1exe11e, a11d 4-methyl-l-pentene.
`
`l-butene,
`
`l-
`
`A method of making such polymers using a catalyst
`containing chromium oxide on a silica—alumina support
`is described. The application includes twenty “examples”
`and twenty-five “tables” giving detailed information on:
`how to prepare, activate, use, and regenerate the catalyst;
`how to influence the molecular weight of the polymer
`products; what solvents or diluents to use in admixture with
`the olefin feed; what feed velocities, reaction pressures,
`reaction temperatures, and reaction times are operative; and
`certain physical a11d chemical characteristics of the polymer
`products.
`
`Example I in the 1953 application includes this statement,
`which we designate as (A):
`(A)
`
`solid polymer which,
`4-Methyl-l-pentene gave tough,
`however, was successfully expelled from the reactor in
`continuous—flow operation.
`
`Example XVI refers to Figure 2 in the drawings, which
`is a graph showing thermal depolymerization curves for
`five polyolefin polymers a11d commercial polyisobutylene.
`Example XVI includes this statement, which we designate as
`(B):
`(B)
`
`Whereas the former (commercial polyisobutylene) began
`to decompose at about 6000 F,
`the latter (polymers of
`propylene, l-butene,
`l-pentene, l-hexene, and 4-methyl-l-
`pentene) began to decompose at about 700-7250 F.
`
`Example XIX describes polymerizing 4-methyl-l-pentene
`"over chromia-alumina-silica catalyst” and states: “The 4-
`methyl-1-pentene polymer is a tough solid polymer suitable
`for a substitute for natural waxes.”
`
`The 1956 application is a continuation—in—part application and
`as filed contains most, but not all, of the information found
`in the 1953 application. Missing from the 1956 application as
`filed are statement (B) a11d the graph of Figure 2. l11cluded
`in the 1956 application are the following new statements not
`present in the 1953 application, which we designate as (C)
`and (D):
`(C)
`
`We have produced crystalline polymers of 4-methyl-l-
`pentene which have melting points in the range of 390 to 4250
`F.
`
`(D)
`
`l -Butene and 4-methyl-l -pentene can be polymerized in
`substantially the same manner as previously described and
`produce crystalline polymers. One sample of *599
`4-
`methyl-1-pentene polymer thus obtained had a melting point
`of 3940 to 4210 F. A second similar polymer of 4-methyl-l-
`pentene produced in the same general manner had a melting
`point of 410 to 4200 F.
`
`The 1967 application, according to appellants’ brief before
`the board, contains all of the disclosures relating to polymers
`of 4-methyl-l-pentene contained in the 1953 and 1956
`applications. The 1971 application on appeal contains
`statements (A) and (B), the Figure 2 graph (now Figure 5),
`and statements (C) and (D).
`
`The following table summarizes the disclosures:
`Fig. 2
`
`Application
`
`Statement
`
`Statement
`
`(now
`
`Statement
`
`Statement
`
`(B)
`
`yes
`
`no
`
`Fig. 5)
`
`yes
`
`no
`
`(C)
`
`no
`
`(D)
`
`no
`
`(A)
`
`yes
`
`yes
`
`yes
`
`yes
`
`(filing date)
`
`1-27-53
`
`1-1 1-56
`
`6-23-67
`
`9-16-71
`
`WESTLAW
`
`2
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`References
`
`The references relied upon by the examiner and board were:
`
`3,257,367
`
`June 21, 1966 (filed June
`
`23,1955)
`
`Edwards
`
`3,299,022
`
`January 17, 1967 (filed
`
`April 4, 1962)
`
`Edwards
`
`3,317,500
`
`May 2, 1967 (filed October
`
`2,1963)
`
`Natta et al,. Rendiconti dell'Accademia Nazionale dei Lincei,
`
`Series VIII, Vol. XIX, No. 6 (December 1955), pp. 397-403.
`
`(2) Claim 14 under 35 U.S.C. s 112. first paragraph, as “based
`on a disclosure which does not teach how to prepare polymers
`having the claimed melting point range” of 390 to 4250 F.
`
`Haven discloses a solid poly-4-methyl-1-pentene which is
`described as crystalline and, when oriented as a fiber, shows
`a melting poi11t of 2350 C. (4550 F.).
`
`*600 (3) Claim 14 under 35 U.S.C. s 132 as “containing new
`matter in the combination of ‘homopolymer’ and the melting
`point range of 3900 to 4250 F.”
`
`Edwards (‘022) describes a solid, amorphous, elastomeric
`homopolymer of 4-methyl-1-pentene. The patent
`states
`
`that a 1,4-type linkage7 is almost exclusive, being over
`95% of the repeating linkages in the homopolymer of 4-
`methyl-1-pentene, when polymerization using an aluminum
`chloride catalyst is conducted at temperatures below -600
`C. The patent further states that “(i)t has been thought
`possible heretofore to obtain polymerization of olefins only
`through (1 ,2-type linkage)” a11d that a “structural copolymer”
`is obtained which contains structural units of the 1,2-
`
`type linkage as well as of the 1,4-type linkage, when
`polymerization is conducted at a higher temperature.
`
`Edwards (‘500) discloses a 1,4-type polymer of 4-methyl-1-
`pentene in a cross-linked form having a molecular weight in
`excess of 1,000,000.
`
`(N atta) discloses a poly-4-metl1yl-1-pentene
`N atta et al.
`which is crystalline and which has a melting point of 2050 C.
`(4010 F.) as determined by X-ray examination.
`
`Rejections
`
`The following rejections were affirmed by the board:
`
`(1) Claims 13-15 under 35 U.S.C. s 112, f1rstparagraph,8 as
`“based on a non-enabling disclosure.”
`
`(4) Claims 13-15 u11der 35 U.S.C. s 102 as “fully met by Natta
`et al.” (Natta).
`
`(5) Claims 13 and 15 under 35 U.S.C. s 102 as “fully met by
`Haven.”
`
`(6) Claim 14 under 35 U.S.C. s 103 as “unpatentable over
`Haven.”
`
`The Examiner's Answer
`
`(1) With respect to the rejection of claims 13-15 under 35
`U.S.C. s 112, first paragraph, as based on a non-enabling
`disclosure, the examiner stated:
`This rejection is premised on the fact that while the claims are
`generic in nature, applicants have, at best, only described a
`very limited species within the generic class. It is believed that
`the scope of the enablement provided by this specification is
`not commensurate with the scope of the protection sought. I11
`re Moore, (58 CCPA 1042, 439 F.2d 1232,)l69 USPQ 236
`((1971)).
`
`* * * The disclosure * * * is non-enabling on how to prepare
`other species of this polymer such as those of Natta et al,
`Haven, Edwards (022) and Edwards (500) which, as far as this
`record is concerned, could not be prepared with the supported
`chromium oxide catalyst.
`
`WESTLAW
`
`3
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`* * * The point is * * * that the claims are much broader than
`the polymers actually prepared in that about the only thing
`they have in common is that all are normally solid.
`
`(2) With respect to the rejection ofclaim 14 under 35 U.S.C. s
`112, first paragraph, as based on a disclosure which does not
`teach how to prepare polymers having the claimed melting
`point range of 390 to 4250 F.,
`the examiner stated that
`“(c)laim 14 reads on a single ‘species’ of polymer which
`begins to melt at 3900 F and is completely melted at 4250 F
`or on any species that melt within this range.” The examiner
`stated further that this rejection followed from a prior board
`decision (not of record) involving the 1967 application which
`held that the disclosure was non—enabling on how to make
`“a species” which had a melting point “of 410 to 4200
`F” (found in statement (D)). The examiner reasoned that the
`specification must also be non—enabling for “the only other
`‘species’ which discloses a melting point, ie., ‘394 to 4210
`F’ ” (found in statement (D)), and, therefore, “(i)f the only
`disclosure of polymers l1avi11g certain melting poi11ts is 11011-
`enabling, the raw disclosure of polymers having even broader
`melting points could not possibly be enabling,” referring
`apparently to statement
`
`(3) With respect to the rejection of claim 14 under 35
`U.S.C. s 132 as containing new matter in the combination
`
`of “homopolymer”” with the melting point range of 3900
`to 4250 F., the examiner explained that the only support
`for the temperature range appears in statement (C) and
`that the support for "homopolymers” presumably is derived
`from statement
`(D), but
`that
`the combination of these
`two limitations was created by amendment and, therefore,
`constituted new matter.
`
`(4) With respect to the rejection of claims 13-15 under 35
`U.S.C. s 102 as fully met by Natta, the examiner stated that
`appellants “agree” that the 4-methyl-1-pentene polymer of
`Natta “anticipates these claims” and that the “only issue” is
`whether Natta is “prior art to these claims.”
`
`1
`the examiner said that Natta is ‘a
`Regarding claim 13,
`statutory bar” because nowhere in the 1971, 1967, or 1956
`applications was there “an enabling disclosure” under 35
`U.S.C. s 112, first paragraph, for the reasons cited above with
`respect to rejection (1). The examiner did not mention the
`1953 application.
`
`WESTLAW
`
`On claim 14, the examiner said that Natta “is prior art” for the
`reasons given for claim 13, for the additional reasons cited
`above with respect to rejections (2) and (3), *601 and further
`because appellants’ affidavit under 37 CFR 1.131 (Rule 131)
`“does not establish reduction to practice of this claim prior to
`December, 1955,” which is Natta’s publication date.
`
`Regarding claim 15, the examiner said that Natta “is prior art”
`for the reasons given for claim 13 and that Natta is “a statutory
`bar” because the claimed subject matter is not disclosed in
`the 1956 application (i. e., statement (B) and the graph (now
`Figure 5) are not in that application).
`
`(5) With respect to the rejection of claims 13 and 15 under
`35 USC. s 102 as fully met by Haven, the examiner stated
`that “(t)he Haven poly(4-methyl-1-pentene) would inherently
`possess the thermal stability properties of claim 15 in view of
`its high melting point” and that Haven is “a statutory bar to
`these claims” for the reasons given for Natta, above.
`
`(6) With respect to the rejection of claim 14 under 35 U.S.C.
`s 103 as unpatentable over Haven, the examiner stated that
`the oriented fiber of Haven having a melting point of 2350 C.
`(4550 F.) would be expected to have a higher melting point
`than the unoriented polymer of appellants and, therefore, the
`range of 390 to 4250 F. recited in claim 14 would have been
`obvious. The examiner said Haven is “prior art” on this claim
`for the reasons given for Natta, above. The examiner also said
`that appellants’ Rule 131 affidavit does not antedate Haven
`because the affidavit “does not establish reduction to practice
`or even conception of the generic range 390-4250 F.”
`
`The Board
`
`The board affirmed the rejections “for reasons essentially
`as given by the Examiner” which the board adopted as its
`own. The board then proceeded to add certain “comments for
`emphasis.”
`
`The board said that statement (C) “stands alone as a statement
`apparently unconnected with the preceding or following
`disclosure,” and that “(i)t gives no cl11e as to how a polymer of
`4-methyl-1-pentene having the recited range of melting points
`is to be prepared * * *.” The board concluded that “(t)he
`disclosure is clearly non—enabling with respect to a teaching
`requisite to inform the artisan of how to make the claimed
`polymer.”
`
`The board further stated that the disclosure “is restricted to a
`
`teaching of how to make crystalline polymers,” but that the
`
`4
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`claims are "not limited to a crystalline polymer of4-methyl- 1 -
`pentene” but “encompasses an amorphous polymer as well,
`which is manifestly outside the scope ofthe enabling teaching
`present in the case.”
`
`The sole references to appellants’ earlier applications, and to
`their Rule 131 affidavit, were contained in this paragraph:
`Inasmuch as we sustain the Exa1ni11er’s
`
`rejections under 35 U.S.C. 112 and 132,
`appellants are palpably not entitled to the
`benefit of the filing dates of their parent
`cases which have essentially the same
`relevant disclosure as present herein; the
`Natta et al. article and Haven patent
`are thus statutory bars and an affidavit
`under Rule 131 becomes inappropriate.
`Consequently, we affirm the rejections of
`the appealed claims under 35 U.S.C. 102
`as fully met by Natta et al. or Haven and
`do not reach nor decide the adequacy of
`the Rule 131 affidavit.
`
`Appellants’ Contentions
`
`Appellants contend that the board committed “serious error”
`in affirming the rejection of claims 13-15 under 35 U.S.C. s
`112, first paragraph, as based on a non-enabling disclosure.
`Appellants argue that
`the board failed to recognize the
`
`the
`invention and that
`“pioneer” status10 of appellants’
`adequacy of their application should be judged by the state
`of the art as ofits filing date. Relying upon 35 U.S.C. s 120,
`*602 appellants assert the benefit of their January 27, 1953
`filing date for claims 13 and 15 and their January 11, 1956
`filing date for claim 14.
`
`the board erred in affirming the
`Appellants argue that
`rejection of claim 14 under 35 U.S.C. s 112, first paragraph,
`because their disclosure leaves “no doubt” as to how to
`
`make the polymers recited in claim 14. Appellants refer
`to statement (C), statement (D), and to examples which
`give specific conditions suitable for making polymers of 4-
`methyl-1-pentene, and argue that s 112 does not require a
`specification to contain a specific working example in order
`to be enabling.
`
`With respect to the rejection of claim 14 under 35 U.S.C.
`s 132 as containing new matter, appellants state that the
`board affirmed this rejection for
`the reasons given by
`
`WESTLAW
`
`the specification as originally
`that
`to wit,
`the examiner,
`filed does not support the combination of “homopolymer”
`with the recited melting point range because statement (C)
`includes copolymers and limiting that melting point range
`to homopolymers is “new matter.” Appellants argue that
`the examiner and the board have considered statement (C)
`completely out of context with the rest of the specification.
`
`Finally, appellants contend that claims 13 and 15 are entitled
`to the benefit of the filing date of the 1953 application which
`is prior to Natta and Haven, that claim 14 is entitled to the
`filing date of the 1956 application, which is less than one
`year subsequent to Natta and to the effective date of Haven,
`and that appellants’ affidavit under Rule 131 shows prior
`completion of the invention of claim 14. Thus, appellants
`contend that claims 13 and 15 are free of the rejections under
`35 U.S.C. s 102 by virtue of the 1953 filing date and that
`claim 14 is free of rejections under 35 U.S.C. ss 102 and
`103 because the Rule 131 affidavit removes Natta and Haven.
`
`Because the board declined to consider the adequacy of
`appellants’ Rule 131 affidavit, appellants request that the case
`be remanded to the board for consideration of the affidavit if
`
`this court reverses the rejections under 35 U.S.C. ss 112 and
`1 3 2.
`
`The Solicitor
`
`The solicitor supports the examiner and the board and
`further argues
`that appellants’ claims cover
`a genus
`of homopolymers of 4-methyl-1-pentene,
`including both
`low and high molecular weight homopolymers;
`that “at
`best” appellants teach how to make only low molecular
`weight homopolymers;
`that
`it
`is possible in View of
`Natta, Haven, Edwards (‘022), and Edwards (‘500)
`to
`produce homopolymers having high molecular weights;
`and, therefore, “the enabling disclosure in the specification
`is not commensurate in scope with the breadth of the
`claims.” The solicitor points out that appellants’ Rule 131
`affidavit shows that they possessed certain molecular weight
`data (showing a molecular weight of 1,800 for a polymer
`of 4-methyl-1-pentene) prior to the filing date of their
`1956 application, yet such data were not included in that
`application. Furthermore,
`the solicitor points to Edwards
`(‘500) which discloses homopolymers of 4-methyl-l -pentene
`having molecular weights greater than 1,000,000. Thus, the
`solicitor contends that the examiner and the board made out
`
`a prima facie case that appellants’ enabling disclosure is not
`commensurate in scope with the claims.
`
`5
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`their disclosure
`that
`In response to appellants’ argument
`should be judged by the state of the art as of its effective filing
`date, the solicitor states:
`
`The
`the
`
`references
`examiner
`
`to
`
`relied
`upon
`demonstrate
`
`by
`the
`
`shortcomings of appellants’ disclosure
`all have dates prior to the filing date
`of this (1971) application. Hence, until
`appellants establish that
`their present
`specification is sufficient,
`there is no
`need to determine what disclosure
`
`in 1953
`l1ave been sufficient
`might
`and 1954 when appellants’ grandparent
`applications were
`filed.
`(Bracketed
`matter added.)
`
`On the rejection of claim 14 as containing new matter,
`the solicitor argues that appellants do not disclose, in their
`1971 application as filed, any homopolymers having *603
`melting points at
`the “outer limits” of the range 390 to
`4250 F. and that “the only melting points disclosed are for
`homopolymers in the range of 394 to 4210 F. and 410 to 4200
`F.”
`
`With respect to the prior art rejections, the solicitor states:
`
`Consideration by the Court of the prior
`art rejections becomes necessary only
`if the lack of enablement rejection and
`new matter rejection are reversed. Since
`the Board had held that appellants’
`grandparent disclosures are essentially
`the same as the present disclosure with
`respect to claim 13 and 15, should the
`lack of enablement rejection and new
`matter rejection be reversed, the prior art
`rejections of claims 13 and 15 should
`also be reversed and the appeal should
`be remanded with respect to claim 14,
`because the Board did not rule on the
`
`sufficiency of the affidavit submitted by
`appellants under 37 CFR s 1.131 * ”‘ *.
`
`OPINION
`
`I. Disregard of the Effect of 35 U.S.C. s 120
`
`WESTLAW
`
`The board premised the rejection of claims 13-15 under 35
`U.S.C. s 112, first paragraph, on insufficient enablement
`in appellants’ 1971 application, disregarding entirely the
`statutory right of appellants under 35 U.S.C. s 120. That was
`clear error.
`
`That the board looked only to appellants’ 1971 application is
`clear from its statement quoted above. Because it sustained
`the rejections under 35 U.S.C. ss 112 and 132, the board
`said, “appellants are palpably not entitled to the benefit of the
`filing dates of their parent cases which have essentially the
`same relevant disclosure as present herein.” The board did not
`specifically mention 35 U.S.C. s 120 and its action deprived
`appellants of their rights under that portion of the statute.
`
`111 apparent recognition of the nature of the board's action,
`the solicitor argues, as above indicated,
`that “there is no
`need to determine what disclosure might have been sufficient
`in 1953” until after appellants have established “that their
`present specification is sufficient.” The complete answer, of
`course, is that one who can establish sufficiency of a 1971
`disclosure has no need to establish sufficiency of a 1953
`disclosure, and no need to exercise his right to the benefit of
`35 U.S.C. s 120.
`
`Fully applicable to appellants’ right under 35 U.S.C.
`[1]
`s 120 is this Supreme Court statement in United States V.
`American Bell Telephone Co., 167 U.S. 224, 247, 17 S.Ct.
`809, 813, 42 L.Ed. 144 (1897):
`
`A party seeking a right under the patents
`statutes may avail himself of all their
`provisions, and the courts may not deny
`him the benefit of a single one. These
`are questions not of natural but of purely
`statutory right.
`
`The board's error in disregarding the effect of 35 U.S.C. s 120
`is highlighted by the legislative and judicial background of the
`statutory provision, which extends over more than a century.
`The Reviser’s Note states: “This section represents present
`law 11ot expressed in the statute * * * .” (Emphasis added.) P. J.
`Federico's Commentary on The New Patent Act, 35 U.S.C.A.
`p. 1, at p. 31 (1954), notes that the benefit provided by s
`120 “was not specified in the old statute but was developed
`by decisions of the courts beginning with a decision of the
`Supreme Court of 1864, Godfrey v. Eames, 68 U.S. 317 (17
`L.Ed. 684).” Godfrey v. Eames discusses the benefit accorded
`to the applicant in the following passage:
`
`6
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`In our judgment, if a party choose to
`withdraw his application for a patent,
`and pay the forfeit,
`intending at
`the
`time of such withdrawal
`to file a new
`
`petition, and he accordingly do so, the
`two petitions are to be considered parts
`of the same transaction, and both as
`constituting one continuous application,
`within the meaning ofthe law. (Emphasis
`
`added.) (68 U.S. at 325-26.) ”
`
`*604 [2]
`The Supreme Court’s explanation illuminates the
`meaning of “shall have the same effect” and clearly requires
`that we View appellants’ applications as “parts of the same
`transaction” and “as constituting one continuous application”
`for the continuing subject matter recited therein.
`
`[3] We held in In re Glass, 492 F.2d 1228, 1232 (CCPA
`1974), that an applicant could not rely on what occurred in the
`art after his filing date because “application sufficiency under
`
`s l 12, first paragraph, must be judged as ofits filing date.” 12
`That principle applies equally to the PTO with respect to a
`continuing application entitled under s 120 to the benefit of
`an earlier filing date. No rational distinction can be made in
`the treatment accorded to the subject matter of an original
`application and to the same subject matter disclosed in a
`continuing application. Courts should not treat the same legal
`question, enablement under s 112, in one manner with respect
`to the applicant and in a different manner with respect to the
`examiner.
`
`in s 120 limits its application to any specific grounds for
`rejection, or permits the examiner, denied use of references to
`reject or to require narrowing of a claim under ss 102 or 103,
`to achieve the same result by use of the same references under
`s 112. Just as justice and reason require application of s 112
`in the same manner to applicants and examiners. symmetry in
`the law, and evenness of its application, require that s 120 be
`held applicable to all bases for rejection, that its words “same
`effect” be given their f1ill meaning and intent.
`
`The clear and unambiguous language of s 120 states
`[7]
`that “(a)n application * * * for an invention disclosed in the
`manner provided by the first paragraph of section 112
`in an application previously filed in the United States * * *
`shall have the same effect, as to such invention, as though
`filed on the date of the prior application * * * .” (Emphasis
`added.) Thus, appellants’ 1971 application should have been
`given “the same effect,” i. e., it should have been tested for
`compliance with s 112, first paragraph, “as though filed on
`the date of the prior application,” to wit, 1953 with respect to
`
`claims 13 and 15 14 and 1956 with respect to claim 14.
`
`[8] Because the board did not consider appellants’ ancestral
`*605
`applications in affiriniiig
`the rejections under
`s
`112, first paragraph, in view of the cited references, those
`rejections must be reversed and the case remanded to permit
`consideration of enablement questions as of the proper filing
`
`date. 15
`
`[61
`I51
`I41
`The examiner and the board, in support of the
`s 112 rejection, cited Natta, Haven, Edwards (‘022), and
`Edwards (‘500), not as prior art, but as evidence to prove
`appellants’ disclosure non—enabling for “other species” of the
`claimed polymer, in an effort, as judicially required, to show
`why the scope of enablement was insufficient to support the
`claims. See, e. g., In re Wertheim, 541 F.2d 257, 263 (CCPA
`1976); In re Armbnister, 512 F.2d 676 (CCPA 1975); In re
`Dinh-Nguyen, 492 F.2d 856, (CCPA 1974); In re Marzocchi,
`439 F.2d 220, 58 CCPA 1069 (1971). As thus implicitly
`recognized, the references would not have been available in
`support of a 35 U.S.C. ss 102 or 103 rejection entered in
`connection with the 1953 application. To permit use of the
`same references in support of the 35 U.S.C. s 112 rejection
`herein, however, is to render the “benefit” of 35 U.S.C. s 120
`
`illusory. 13 The very purpose of reliance on s 120 is to reach
`back, to avoid the effect of intervening references. Nothing
`
`II. Employment of a Later State of the Art in Testing
`For Compliance With 35 U.S.C. s 112, First Paragraph
`
`The pendency since 1953 of appellants’ applications, giving
`rise to concern over whether a claim may issue of breadth
`sufficient
`to encompass the later existing, “non-enabled”
`amorphous polymers of Edwards, and the PTO’s application
`to the present facts of this court's statement in In re Moore,
`439 F.2d 1232, 58 CCPA 1042 (1971) that “the scope
`of enablement” must be “commensurate with the scope of
`protection sought,” impel clarification.
`
`Citing Moore, the examiner stated that the s 112 rejection
`“is premised on the fact that while the claims are generic in
`nature, applicants have, at best, only described a very limited
`species within the generic class.” Further, the examiner said
`“(t)he disclosure * * * is non—enabling on how to prepare other
`species of this (claimed) polymer such as those of (the four
`cited references) which, as far as this record is coiicenied,
`
`WESTLAW
`
`7
`
`

`
`Application of Hogan, 559 F.2d 595 (1977)
`194 U.S.P.Q. 527
`
`could 11ot be prepared with the supported chromium oxide
`catalyst.” The board, in adopting the examiner's reasoning,
`recognized that its primary basis was the Edwards polymer:
`“The claims on appeal, however, are not
`limited to a
`crystalline polymer * * * but encompasses (sic) an amorphous
`polymer (of Edwards) as well which is manifestly outside the
`scope of the enabling teaching present in the case.” Thus,
`amorphous polymers not having been, on this record,
`in
`existence in 1953, the examiner and the board focused on the
`later state of the art represented by the 1962 filing date of
`
`Edwards. 16
`
`[9] A later state of the art is that state coming into existence
`after the filing date of an application. This court has approved
`use of later publications as evidence of the state of art existing
`
`on the filing date of an application. 17 That approval does
`not extend, however, to the use of a later (1967, Edwards)
`publication disclosing a later (1962) existing state of the art
`i11 testing a11 earlier (1953) application for compliance with
`s 112, first paragraph. The difference may be described as
`that between the permissible application of later knowledge
`about art-related facts existing on the filing date and the
`impermissible application of later knowledge about
`later
`art-related facts (here, amorphous polymers) which did not
`exist on the filing date. Thus, if appellants’ 1953 application
`provided sufficient enablement, considering all available
`evidence (whenever that evidence became available) of the
`1953 state of the art, i.e., of the condition of knowledge about
`all art-related facts existing in 1953, then the fact of that
`enablement was established for all time and a later change in
`the state of the art cannot change it.
`
`Rejections under s 1 12, first paragraph, on the ground that the
`scope of enablement is not commensurate with the scope of
`the *606 claims, orbit about the more fundamental question:
`To what scope of protection is this applicant's particular
`contribution to the art entitled?
`
`Though we do not reach the point on this appeal, we note
`appellants’ argument
`that
`their invention is of “pioneer”
`status. The record reflects no citation of prior art disclosing
`a solid polymer of 4-methyl-l-pentene, which may suggest
`that appellants at least broke new ground in a broad sense.
`On remand, appellants may be found to have been in fact the
`first to conceive and reduce to practice “a solid polymer” as
`set forth in claim 13. As pioneers, if such they be, they would
`deserve broad claims to the broad concept. What were once
`referred to as “basic inventions" have led to “basic patents,”
`which amounted to real incentives, not only to invention and
`
`WESTLAW
`
`its disclosure, but to its prompt, early disclosure. If later states
`of the art could be employed as a basis for rejection under 35
`U.S.C. s 1 12, the opportunity for obtaining a basic patent upon
`early disclosure of pioneer inventions would be abolished.
`
`The PTO has not challenged appellants’ assertion that their
`1953 application enabled those skilled in the art in 1953
`to make a11d use “a solid polymer” as described i11 claim
`13. Appellants disclosed, as the only then existing way to
`make such a polymer, a method of making the crystalline
`form. To now say that appellants should have disclosed in
`1953 the amorphous form which on this record did not exist
`until 1962, would be to impose an impossible burden o11
`inventors and thus on the patent system. There cannot, in
`an effective patent system, be such a burden placed on the
`right to broad claims. To restrict appellants to the crystalline
`form disclosed, under such circumstances, would be a poor
`way to stimulate invention, and particularly to encourage its
`early disclosure. To demand such restriction is merely to state
`a policy against broad protection for pioneer inventions, a
`policy both shortsighted and unsound from the standpoint
`of promoting progress in the useful arts, the constitutional
`purpose of the patent laws. See In re Goffe, 542 F.2d 564,
`(CCPA 1976).
`
`In In re Fisher, 427 F.2d 833, 839, 57 CCPA 1099, 1108
`
`(1970), this court set forth the basic c