This appeal is from the decision of the Board of Appeals affirming the rejection of claims 11, 25, 26, 28, 29, 39, 41 and 45 in appellants' application1 entitled "1-Dehydro-6-Methyl Steroid Compounds."

Each claim defines a specific steroid compound, claim 11 relating to a compound of the spirostane series; claims 25, 26, 28, 29 and 45 to compounds of the androstane series; and claims 39 and 41 to compounds of the pregnane series. It is unnecessary to reproduce any claim since the nature of the compounds will become apparent.

The Patent Office rejected all claims for failure of the specification "to comply with 35 U.S.C. §§ 101 and 112." As we view the record, we are concerned with not only the legal adequacy of appellants' disclosure of "how to use" the claimed compounds under 35 U.S.C. § 112,2 but also the legal adequacy of assertions of usefulness in the original specification under 35 U.S.C. § 101.3 We are particularly concerned with the applicability of the decision of the Supreme Court in Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69, to the facts here.4

The appropriate starting point for disposition of those issues is appellants' specification, which begins with several general statements as to how the claimed compounds are useful:

It is an object of the present invention to provide a process for the conversion of 3-oxo-Δ4-6-methyl and 3-oxo-Δ⁴:6-6-methyl steroidal derivatives into the corresponding 1-dehydro-derivatives which are a new class of compounds often possessing high biological activity.

The present invention provides new 1-dehydro-derivatives of 3-oxo-Δ⁴:6-6-methyl and certain 3-oxo-Δ⁴-6-methyl steroids having the formula

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

(with or without a double bond at the 6:7 position) which 1-dehydro-derivatives are of value on account of their biological properties or as intermediates in the preparation of compounds with useful biological properties as herein indicated or as is apparent to those skilled in the art.

* * * * * *

The invention also provides the following new steroidal 6-methyl-1:4-dien-3-ones and 6-methyl-1:4:6-trien-3-ones which are of value in steroid technology, in the furtherance of steroidal research and in the application of steroidal materials to veterinary or medical practice, whether as tablets, elixirs, injections, implants, or other types of pharmaceutical preparation well known to those skilled in the art. (Emphasis supplied)

The description continues with lists of specific compounds of the cholestane, spirostane, androstane and pregnane steroid series together with a recital of "uses" for the compounds recited in the lists. Two compounds of the spirostane series are disclosed, one of which, 6-hydroxy - 6 - methyl - 25D - spirosta-1:4-dien-3-one, is the subject of claim 11. They are said to be

* * * of value as intermediates in the preparation of 6-methylated aromatic steroid hormones into which intermediates they may be converted by reaction in solution in acetic anhydride with toluene-p-sulphonic acid. (Emphasis supplied)

Eighteen compounds of the androstane series are disclosed. The five recited in the claims are

17β - Hydroxy-6:17α - dimethylandrosta-1:4:6-trien-3-one [Claim 45]

17α - Ethynyl - 17β - hydroxy - 6 - methylandrosta - 1:4:6 - trien - 3 - one [Claim 25]

17β - Acetoxy - 4:6α - dimethylandrosta-1:4-dien-3-one [Claim 26]

9α - Fluoro - 11β:17β - dihydroxy - 6α:17α - dimethyl - androsta - 1:4 - dien-3-one [Claim 28]

17β - Hydroxy - 6α - methyl - 17α-(prop-l-ynyl) androsta-1:4-dien-3-one [Claim 29]

* * * of value as intermediates in the preparation of 6-methylated aromatic steroidal hormones, into which they may be converted by reaction in solution in acetic anhydride with toluene-p-sulphonic acid, as intermediates in the preparation of biologically active compounds and in some cases on account of their biological properties. (Emphasis supplied)

Some sixteen compounds of the pregnane series are disclosed, including the two compounds of claims 39 and 41,

6α - Methyl - 16α:17α - isopropylidenedioxy - pregna - 1:4 - diene - 3:20 - dione [Claim 39] and

20:20 - Bisethylenedioxy - 6α - methyl-pregna-1:4-dien-3-one [Claim 41].

* * * of value as intermediates in the preparation of compounds with valuable biological properties such as progestational properties or properties associated with the adreno-cortical hormones or as intermediates in the preparation of compounds with useful biological properties. (Emphasis supplied)

Appellants' arguments are, in the main, two-fold. They first contend that the specification is adequate to comply with § 101 and § 112 because it discloses that the claimed compounds "have present and useful biological activity of the nature known for analogous steroidal compounds," and that "one skilled in the art would know how to use the compounds of the claims to take advantage of their presently-existing biological activity." The second argument is that the specification adequately discloses that the compounds "have use as intermediates in the production of aromatic steroidal hormones and other biologically useful compounds," and that the examiner has admitted one skilled in the art would know how to use the claimed compounds as intermediates for that purpose. The respective arguments present somewhat different considerations, and will be discussed separately.

I. The Asserted "Therapeutic" or "Biological" Activity

In his final rejection, the examiner stated:

All the claims are again rejected as lacking adequate utility. The disclosure fails to indicate to one skilled in the art how one is to use the novel compounds of this invention. The therapeutic properties are stated in such general terms i. e., "useful biological properties", that it fails to convey any useful information to one skilled in the art and further fails to state which of the claimed compounds have a therapeutic activity. * * *

In response, appellants submitted argument that the rejection "is not warranted," and also submitted an affidavit of one of the applicants, a Dr. Petrow, which appellants summarized in a letter accompanying the affidavit and substantially reiterate in their brief here:

Attached hereto is an affirmation of Vladimir Petrow which shows that one skilled in the art would be able to determine the biological uses of the claimed compounds by routine tests. The Petrow affirmation specifically shows that * * * [the steroid of] (Claim 25) in the well-known McPhail modification of the Clauberg Assay possesses progestational activity on oral administration. The natural hormone, progesterone, on the other hand shows no response on oral administration in the same test. Accordingly, it is quite evident that the compound of claim 25 is a valuable oral progestational agent. This affirmation, accordingly, is proof of the fact that one skilled in the art would have no difficulty in determining whether or not the 1-dehydro derivatives of the pregnane series, as claimed, have value biologically as progestational agents. (Emphasis supplied)

In addition, the Petrow affirmation * * * discloses the determination of the anabolic activity of * * * the compound of claim 26. It is shown by standard test procedure that this compound does have anabolic activity and that, in addition, it has a much higher anabolic/androgenic ratio than that of testosterone propionate, a well-known anabolic agent. * * *

Further * * * the oral progestational activity of * * * the compound of claim 39, is set forth by virtue of well-known test procedure. This pregnane derivative is shown to be approximately 4 times as active progestationally on oral administration as * * a well-known oral progestational agent. * * * by means of other tests the compound of claim 39 has been found to have valuable anti-inflammatory activity greater than that of either cortisone acetate or hydrocortisone. By virtue of a further standard test procedure the gluco corticoid activity of the compound of claim 39 has been shown to be more than 10 times that of cortisone and hydrocortisone acetates.

The affirmation of Dr. Petrow not only shows that the compounds claimed do have biological activity as asserted in the specification, but that the nature of such biological activity can be readily determined by those skilled in the art by reason of standard test procedures.5

Appellants' affidavit and argument went for naught, the examiner responding that

* * * the final rejection of all the claims in the case as lacking an adequate disclosure of utility is deemed sound and adhered to. * * *

In his Answer before the board, the examiner rejected the claims

* * * as failing to comply with 35 U.S.C. 101 and 112 in that the specification fails to teach those skilled in the art how to use the invention. * * *

After reviewing the various passages of appellants' specification relating to the uses of the claimed compounds and "how to use" them, he concluded:

* * * nowhere is there found a specific allegation of utility for any compound within the scope of the claims. Thus the specification does not describe the manner in such full, clear, concise and exact terms as to enable one skilled in the steroid art to use the compounds of the instant invention. * * * Appellants have not listed one specific use for their claimed steroids and as those skilled in the art know steroids are susceptible to hundreds of uses. What appellants are really saying to those in the art is take these steroids, experiment, and find what use they do have as medicines. (Emphasis supplied)

With regard to the Petrow affidavit, the examiner stated:

* * * it may be that oral progestational activity can be determined by procedures well known in the art. * * * Once one knows that a compound does have utility as a progestational agent, it is of course merely routine to determine at what doses this activity exists. In other words, if in the specification as filed there had been a specific allegation that the compounds herein claimed had progestational activity this would have been sufficient to satisfy 35 U.S.C. 112, since those skilled in the art would know how to use a steroid possessing progestational activity. Thus, the aforementioned affidavit is not determinative of the issue at bar which is if the specification as filed does not allege a specific utility would one skilled in the art know how to use the invention?

The board agreed, adding that the reference in the specification to "biological properties" of the claimed compounds "is so general and vague as to be meaningless." It found in the specification no reason to expect that any of the claimed compounds "presents the probability of usefulness in the same manner as a natural hormone."

Appellants rely on the allegations in their specification that the disclosed compounds have "biological activity" as adequate disclosure of a use for the claimed compounds, stating:

The disclosure teaches that the novel compounds are, in some cases, of value because of their presently existing biological activity. The application * * teaches that such steroidal materials may be applied to veterinary or medical practice in the form of tablets, elixirs, injections, implants or other pharmaceutical preparations. In other words, the compounds in question are to be used in the manner of other steroid hormones in veterinary or medical compositions.

They also rely on the Petrow affidavit as evidence of the proposition that one skilled in the art would know how to use the claimed compounds, and assert that "the Board erroneously, completely ignored the Petrow affirmation confirming present useful hormonal activity of some of the compounds * * *."

We are not persuaded by appellants' arguments that their specification meets the requirements of §§ 101 and 112. It seems to us that the nebulous expressions "biological activity" or "biological properties" appearing in the specification convey no more explicit indication of the usefulness of the compounds and how to use them than did the equally obscure expression "useful for `technical and pharmaceutical purposes'" unsuccessfully relied upon by the appellant in In re Diedrich, 318 F.2d 946, 50 CCPA 1355.⁶

Nor does the Petrow affidavit help appellants' cause here. While that affidavit may show that three of appellants' claimed compounds do in fact possess specific anabolic, anti-inflammatory or glucocorticoid activity or usefulness as oral progestational agents, that is not the issue before us. It is what the compounds are disclosed to do that is determinative here. In that regard, it is appropriate to note that the specification does not even intimate that the claimed compounds of the spirostane and pregnane series themselves have "biological activity," much less the specific progestational, glucocorticoid or anti-inflammatory activities mentioned in the affidavit. With respect to the eighteen androstanes that are disclosed, five of which are claimed here, it is said they "are of value * * * in some cases on account of their biological properties." (Emphasis supplied.) There is no suggestion which androstanes are of value for that reason, or what biological properties make them useful.7

Thus we agree with the solicitor that appellants' affidavit is simply an ex post facto affirmation irrelevant to the issue of adequacy of the original disclosure inasmuch as it attempts to add statements of usefulness to the disclosure of the application as filed. Indeed, the sum and substance of the affidavit appears to be that one of ordinary skill in the art would know "how to use" the compounds to find out in the first instance whether the compounds are — or are not — in fact useful or possess useful properties, and to ascertain what those properties are. It amounts to an admission that experimentation would be necessary to determine actual uses — or possible lack of uses — of the compounds, as well as how to employ them in a useful manner. But surely Congress intended § 112 to presuppose full satisfaction of the requirements of § 101. Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention. As this court stated in Diedrich, quoting with approval from the decision of the board:

We do not believe that it was the intention of the statutes to require the Patent Office, the courts, or the public to play the sort of guessing game that might be involved if an applicant could satisfy the requirements of the statutes by indicating the usefulness of a claimed compound in terms of possible use so general as to be meaningless and then, after his research or that of his competitors has definitely ascertained an actual use for the compound, adducing evidence intended to show that a particular specific use would have been obvious to men skilled in the particular art to which this use relates.

As the Supreme Court said in Brenner v. Manson:

* * * a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. * * *

Appellants further argue that the board had no grounds for concluding there was "no definite expectation from the specification" that any one of the claimed compounds "presents the probability of usefulness in the same manner as a natural hormone." According to appellants, "The analogy to known natural and synthetic hormones [presumably appellants intend to draw an analogy in chemical make-up or constitution between the claimed compounds and, for example, the natural hormone progesterone] enables one to predict that the new compounds would possess similar hormonal activity." Moreover, since some of the disclosed compounds of the pregnane series, not claimed here, were stated in the specification to be of value on account of their hydrocortisone-like anti-inflammatory properties, appellants contend that "it would not be unreasonable to predict that others of this series [i. e. the claimed pregnane derivatives] would also have this property."

Similar arguments were advanced before, and rejected by, the Supreme Court in Brenner v. Manson, 383 U.S. at 531-532, 86 S.Ct. 1033. We find no error in the board's position on the facts of this case, absent a disclosure in the specification that the requisite properties of the claimed compounds are also similar to those of a natural or synthetic hormone of known activity. Appellants' arguments fail to recognize that many steroid compounds may possess no activity whatsoever. It cannot be presumed that a steroid chemical compound is "useful" under § 101, or that one of skill in the art will know "how to use" it, simply because the compound is closely related only in a structural sense to other steriod compounds known to be useful. Cf. In re Adams, 316 F.2d 476, 50 CCPA 1185, dissenting opinion.

We conclude that appellants' specification does not comply with § 101 and § 112 merely on the statements of "biological" activity recited therein.

As can be seen from the portions of the specification quoted earlier, appellants disclose that the claimed spirostane and androstane derivatives may be used as intermediates in the formation of 6-methyl aromatic steroids, and that the claimed pregnane derivatives may similarly be employed to produce steroids having "progestational properties" or "properties associated with the adreno-cortical hormones."8

The examiner has conceded that "those skilled in the art would know how to produce aromatic steroids" from the claimed compounds. However, he did not believe the inquiry into the adequacy of the disclosure should stop there, noting:

* * * As to the portions of the disclosure which indicates that the claimed compounds are useful as intermediates in the production of 6-methylated aromatic steroids, applicants have failed to show even one useful aromatic steriod which corresponds to the claimed intermediates. In other words, applicants' statement of utility is to the effect that the novel compounds claimed herein are useful in making other novel compounds which have no known use. In the Examiner's opinion this is not sufficent nor does the Examiner know of any decision holding that such a statement is adequate. (Emphasis supplied)

Appellants contend that the examiner's holding9 "is straight into the teeth" of the decision of this court in In re Nelson, 280 F.2d 172, 47 CCPA 1031. They urge that the present disclosure with respect to the usefulness of the claimed compounds as intermediates "is on all fours" with that in Nelson. In their view, the examiner's requirement for disclosure of a use of the final products produced by carrying out the known process on the novel intermediates of the claims "is an absurdity" in view of Nelson and the further decisions of this court in In re Wilke, 314 F.2d 558, 50 CCPA 964, In re Adams; and In re Manson, 333 F.2d 234, 52 CCPA 739. They look upon the latter decisions as carrying forward the principle expressed in Nelson that, in their words, "there is no necessity for a specification to teach the use of an end product where such end product is not the invention claimed, but merely the result thereof."

The decision in Nelson might well control here — if that decision were still a viable precedent. The question remains, however, whether the majority view in Nelson — that steriod chemical compounds may be useful under § 101 if they are useful to chemists doing research on steroids and can be used to produce steroids which are members of a general class some members of which are known to have useful thereapeutic properties — can possibly remain the law in view of Brenner v. Manson.

There the Supreme Court, in considering what renders a process useful under § 101, discussed the cases cited by appellants here, stating (all emphasis supplied):

As is so often the case, however, a simple, everyday word [useful] can be pregnant with ambiguity when applied to the facts of life. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility — other than as a possible object of scientific inquiry — has not yet been evidenced. It was not long ago that agency and court seemed of one mind on the question. In Application of Bremner, 182 F.2d 216, 217, 37 C.C.P.A. (Pat.) 1032, 1034, the court affirmed rejection by the Patent Office of both process and product claims. It noted that "no use for the products claimed to be developed by the processes had been shown in the specification." It held that "It was never intended that a patent be granted upon a product, or a process producing a product, unless such product be useful." Nor was this new doctrine in the court. See Thomas v. Michael, 166 F.2d 944, 946-947, 35 C.C.P.A. (Pat.) 1036, 1038-1039.

The Patent Office has remained steadfast in this view. The CCPA, however, has moved sharply away from Bremner. The trend began in Application of Nelson, 280 F.2d 172, 47 C.C. P.A. (Pat.) 1031. There, the court reversed the Patent Office's rejection of a claim on a process [product] yielding chemical intermediates "useful to chemists doing research on steroids," despite the absence of evidence that any of the steroids thus ultimately produced were themselves thus ultimately produced were themselves "useful." The trend has accelerated,10 culminatin the present case where the court held it sufficient that a process produces the result intended and is not "detrimental to the public interest." 333 F.2d at 238, 52 C.C.P.A. (Pat.) at 745.

Stripped of the highly technical procedural differences, the basic issue here, as in Brenner v. Manson, is whether the burden resting on an applicant to show that his invention is useful within the requirements of § 101 has been satisfied. While Manson did not disclose any use at all for the steroid compounds produced by his process, the arguments he advanced as to why those compounds were useful under § 101 correspond in substantial measure to the disclosure of the specification and the arguments relied on here. There can be no doubt that the insubstantial, superficial nature of vague, general disclosures or arguments of "useful in research" or "useful as building blocks of value to the researcher" was recognized, and clearly rejected, by the Supreme Court:

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. * * * The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point — where specific benefit exists in currently available form — there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. Respondent appears to concede that with respect to a product, as opposed to a process, Congress has struck the balance on the side of nonpatentability unless "utility" is shown. Indeed, the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole "utility" consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product. That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself. (Emphasis supplied)

Wholly aside from the controlling impact of that reasoning here, the conclusion is inescapable that, just as the practical utility of the compound produced by a chemical process "is an essential element" in establishing patentability of the process, 383 U.S. 519, 86 S.Ct. 1033, so the practical utility of the compound, or compounds, produced from a chemical "intermediate," the "`starting material" in such a process, is an essential element in establishing patentability of that intermediate. It seems clear that, if a process for producing a product of only conjectural use is not itself "useful" within § 101, it cannot be said that the starting materials for such a process — i. e., the presently claimed intermediates — are "useful." It is not enough that the specification disclose that the intermediate exists and that it "works," reacts, or can be used to produce some intended product of no known use. Nor is it enough that the product disclosed to be obtained from the intermediate belongs to some class of compounds which now is, or in the future might be, the subject of research to determine some specific use.11 Cf. Reiners v. Mehltretter, 236 F.2d 418, 421, 43 CCPA 1019, 1026, where compounds employed as intermediates to produce other directly useful compounds were found to be themselves useful.

It is impossible to reconcile the reasoning and conclusion of the majority in Nelson, Wilke, Adams and Szwarc with the majority view in Brenner v. Manson. Therefore, to the extent that those decisions are inconsistent with Brenner v. Manson and the views expressed herein, they must be, and are, overruled.

The decision is affirmed.

Affirmed.

RICH, Judge.

I, like Judge Smith, whose sentiments I share, am now revising a dissenting opinion to cover this case and the companion Joly case, 376 F.2d 906, 54 CCPA ___, argued together December 5, 1966, and involving similar issues. I initially filed my tentative dissenting opinion herein February 1 in response to the December 22 majority opinion and a January 24 opinion in Joly. Thereafter the majority opinion in Joly was 75% rewritten on February 8 and again, on February 20, its content, responsive in part to observations in my dissent, was reduced 50%. In the ensuing three weeks the court has conferred on a long agenda of cases and held a week of hearings March 6-10, upon the conclusion of which I resumed, on March 13, my revision of the dissent. On that day notice was given by the Chief Judge that these two cases "will go down Thursday, March 16."

Protest to the arbitrary use of assumed power having proved futile, this unprecedented display of unseemly haste, condoned by the majority, necessitates this notice.

SMITH, Judge (dissenting).

Our usual practice is to release the majority opinion simultaneously with any dissenting opinions. There has been an unwarranted departure from this procedure in this case, the effect of which is to preclude an expression of my views at this time. I am unable to see wherein the cause of justice is served by such an irregular procedure. This dissent is therefore 1) a protest to the procedure here adopted, and 2) a notice that my full written dissent will be forthcoming as soon as the pressures of court work permit.

WORLEY, Chief Judge (specially concurring).

It is most regrettable that for the first time in the history of this court, the usual orderly processes of the court have been ignored by a minority.

The instant appeal was re-argued December 5, 1966. The majority opinion was circulated December 22 in its present form. Yet, now, nearly three months later, the dissenting opinions are not available and no valid excuse is given.

It would seem that if the majority can direct its time and attention to expediting the work of the court it should not be too much to expect the same diligence from the minority.

It should not be necessary to say that the duty of this court is to the litigants, applicants for patents, the Patent Office and the public — not to the possible whims and caprices of individual judges. It is impossible to discharge that duty by condoning the instant derelictions, which hereafter will not be countenanced.

RICH, Judge.

With the filing of the attached dissenting opinion in the above case, I hereby withdraw my "Notice of Forthcoming Dissenting Opinion," dated March 16, 1967 (published in Patent, Trademark and Copyright Weekly Reports for April 3, 1967, 153 USPQ No. 1, at page 56 following the majority opinion herein).

RICH, Judge (dissenting).

                         Contents                                      Page
        
             I.   Introduction                                                        1
            II.   Manson Is Distinguishable and Should Not Be Extended                3
           III.   Manson Did Not Overrule Nelson                                      7
            IV.   Rather Than Starting a "Trend," Nelson Was Intended
                  To Stop a Short-Lived Departure from Established
                  Law                                                                 9
             V.   This Case and Manson Differ by More Than "Highly
                  Technical Procedural Differences"                                  16
            VI.   There Is a Vast Legislative History on the Meaning
                  of "Useful"                                                        17
           VII.   The Supreme Court in Manson Did Not Hold That Disclosure
                  of Use in Research Alone Is Noncompliance with
                  the Statute. It Reserved That Question                             21
          VIII.   These Cases Create Unworkable Administrative Problems.
                  If They Stand, the Congress Should Act                             24
            IX.   The Majority Decisions Are an Incentive to the Contriving
                  of Phony Utilities, Withholding of Information
                  from Applications, and Delay in Disclosure of New
                  Compounds                                                          30
             X.   The Clash of the Sound and the Unsound Quid Pro
                  Quo Philosophies of the Patent System                              38

Herein I state my views both on this case and the companion case of In re Joly, 376 F.2d 906, 54 CCPA ___, wherein Judge Smith has written the principal dissenting opinion, with which I generally agree. These cases having been considered together throughout and the majority having decided Joly on the basis of its opinion herein, we agreed on this division of labor and the dissenting opinions in each case have had to await developments in the other.

These two cases are something of a sequel to our In re Manson, 333 F.2d 234, 52 CCPA 739, reversed by the Supreme Court in Brenner v. Manson (hereinafter Manson), 383 U.S. 519, 86 S.Ct. 1033, March 21, 1966. These cases are Chapter II to Manson's Chapter I and involve issues not placed before or argued in the Supreme Court in Manson. As I read the Manson opinion, after following the cases closely, including attendance at the arguments before the Supreme Court,1 it is my view that the Manson decision is not controlling, is not determinative of the issues here. That was my view when, on July 11, 1966, I circulated an opinion for the court herein which enjoyed majority support for more than three months, during which time no dissenting opinion appeared.2

A related key question, to my mind, was then, and still is whether our decision in In re Nelson, 280 F.2d 172, 47 CCPA 1031 (hereinafter Nelson), on which appellants principally rely, remains a viable precedent after Manson. I think it does and that its overruling herein, together with a somewhat haphazard selection of other cases, is actually inconsistent with the Supreme Court's action in deciding Manson, notwithstanding some of the words in its opinion.

The majority's extension of Manson herein and in Joly demonstrates to me the need for one or both of two things: (1) further illumination by the Supreme Court, based on arguments directed to the problem, of the law on "utility" with respect to chemical componds, which are in fact useful to research chemists in their work and commercial in the sense that they are manufactured, sold, and purchased for that purpose; (2) action by Congress to remove the uncertainty and confusion in which these decisions surely leave the law.

To the end that the legal problems may be appraised in the light of practical considerations as well as legal theories, I have set down what follows.

I cannot believe that the purpose of the Supreme Court majority in Manson was to decide future issues in patent law unwittingly, by virtue of lower court expansion of its dictum, without knowing the implications of such decisions. Incautious though some of its language may have been, it expressly reserved judgment with the phrase "we express no view" on a group of our cases in which we held new chemical compounds to be "useful," though having utility only in scientific investigation. I find those decisions logically indistinguishable from the principles applied by the majority here in the name of Manson. (See footnote 17 of Manson.)

What the majority makes out of Manson by way of a test for utility under 35 U.S.C. § 101 is that the compound must have "practical utility," or "some specific use." This is its summation of what is to be found in the Manson passages quoted by the majority. My own summary of that dictum would be that there must be specific, substantial utility which provides specific benefit in currently available form. One reason for characterizing this as dictum is that the opinion also refers to decisions of this court, including Nelson, listed in footnote 23 and left undisturbed, which have required "a showing of utility greater than any adduced in the present case," (emphasis mine) which, it will be remembered, was zero in Manson. The distinction which must be borne in mind is that between some disclosure of utility and none. The most significant aspect of Manson's patent application and his Rule 204(b) affidavits is that they disclosed no utility whatever for the compounds produced by his claimed process.

The issue before the Supreme Court in Manson was, primarily, the right of Manson to an interference with an issued patent3 on a process claim, a subsidiary issue being the sufficiency of the affidavits, containing no disclosure of utility for the product of the claimed process, to show a reduction to practice and hence prima facie priority, which might deprive the patentees of their patent. The issue here is the legal adequacy of an admitted disclosure of a use in an application for a patent on chemical compounds, no issued patent and no question of priority being involved.

While in Manson there was no disclosure of a use for the compound, reliance being placed on a mere assertion that utility was obvious to Manson, here there is admitted disclosure of utility of the compounds as intermediates to make certain steroids. The Supreme Court in Manson did not have this specific issue before it.

If it be said that use as intermediates is utility "only in the sense that it may be an object of scientific research," I note, as did footnote 17 of Manson, the cases holding that findings of anti-tumor effectiveness of chemical compounds in mice, rats, and rabbits, i. e., in laboratory animals, objects only of scientific research, constituted statutory usefulness. Since the Supreme Court deliberately left standing these decisions wherein patentability was sustained on the basis of usefulness only in scientific research, I cannot possibly read Manson as finding such utility legally inadequate.

Although the Manson opinion makes an argumentative assumption that "Congress intended that no patent be granted on a chemical compound whose sole `utility' consists of its potential role as an object of use testing," there is no citation of prior decisions or legislative history in support of that assumption, I know of none, that is not the case here, and the statement appears to be inconsistent with the action taken by the Court in Manson footnote 17. See Potter v. Tone, 36 App.D.C. 181 (1911), which is an overlooked part of the history of utility law and a case relied on by Chief Judge Worley in his opinion In re Folkers, 344 F.2d 970, 52 CCPA 1269, hereinafter discussed (section VIII, infra), a case I find indistinguishable from this one but in which he found statutory utility with the unanimous support of the court, which case he has not overruled. The Supreme Court itself, in footnote 23 of Manson, acknowledged the Folkers case as being one having a showing of utility "greater than any adduced" by Manson.

I have searched diligently through the Manson opinion's discussion of process utility for some authoritative statement of what constitutes usefulness in a compound, have found no more than the dictum using the adjectives "substantial," "specific," "currently available," and "practical," and I am forced back on the same inquiry I made in Nelson when confronted by the Patent Office with the same words, usefulness to whom and for what purpose? I believe, as hereinafter stated, that usefulness, to chemists doing research on steroids, as intermediates to make other compounds they desire to make is sufficient. I further believe that this is the law as to the meaning of "useful" in 35 U.S.C. § 101 as it was applied for decades and reaffirmed by the 1952 codification of the provision without change and that, for reasons hereinafter stated, it is sound and venerable law conducive to a sound patent system. I do not believe that in settling Manson's claim to an interference the Supreme Court showed any intention of wholly overturning 175 years of established law on what is "useful," especially when it seems not to have found the significant legislative history underlying 35 U.S.C. § 101, which is in history, not in the annals of the legislature.

It is the majority here, including the two judges who wrote dissenting opinions in Nelson, which uses Manson as a pretext for unnecessarily overruling Nelson. Certainly the Manson opinion indicates no intent to overrule Nelson. In fact, the Supreme Court majority said very little about Nelson and what it did say contains errors indicating that the case and its place in legal history were not well understood. The majority opinion here quotes the only passage referring to Nelson, taking silent note of one of the errors in it by inserting in brackets the word "product" following reference to "process" for the reason that no process claims were involved in Nelson. All the Supreme Court said about Nelson was that therein this court moved sharply away from In re Bremner, 182 F.2d 216, 37 CCPA 1032, reversing the "rejection of a claim on a process" (which was not the fact) "yielding chemical intermediates `useful to chemists doing research on steroids,' despite the absence of evidence that any of the steroids thus ultimately produced were themselves `useful'." If Nelson had involved any process claims, perhaps the Manson decision would by implication have overruled a decision on them, but it did not.

The Government's brief in Manson likewise had little to say about Nelson and deals with the case only in a footnote stating, inter alia, that "Product claims alone were in issue in Nelson," and "While not overruling Bremner, the court interpreted it as requiring nothing more than was present in Nelson." Actually, the Nelson opinion, which I wrote, is at some pains to say that the rule of Bremner was that an application must contain "an assertion of utility and an indication of the use or uses intended," that the rule had been fully met in the case, and that we were "not disposed to alter this requirement, which has now been with us for a decade" (280 F.2d at 184, 47 CCPA at 1047). It is not seen how this can be characterized as a move "sharply away from Bremner," as the Supreme Court said.

The situation is clear. The dissenting judges in Nelson held, and still hold, certain a priori notions about the meaning of "useful" in 35 U.S.C. § 101 and its predecessor statutes back to 1790. Although these notions are directly contrary to 175 years of legal history, they find dictum in Manson conforming to their views. This assumed majority "view" in Manson they find requires Nelson to be overruled, just as they find Manson compels these cases to be affirmed. However, the differences between the facts on which the Supreme Court had to base its decision in Manson and the facts it would have to think about if it had these cases or one comparable to Nelson before it, are such that the conclusions of the majority here about the controlling effect of Manson are legally unsound under elementary principles of stare decisis.

In the next section I hope to clarify where Nelson stands in legal history.

IV. Rather Than Starting a "Trend," Nelson Was Intended To Stop a Short-Lived Departure from Established Law

Nelson did not start a trend, contrary to the statement in Manson. It was intended to stop and until now to some extent succeeded in stopping, a very modern trend, started after 1950 in the Patent Office. Mr. Justice Harlan appreciated this fact. In Manson he said in his dissent, joined by Mr. Justice Douglas, 383 U.S. at 539, 86 S.Ct. at 1044, — and it cannot be too often repeated:

While available proof is not conclusive [i. e., in the Manson record, there being plenty elsewhere in the memories of those living], the commentators seem to be in agreement that until Application of Bremner, 182 F.2d 216, 37 C.C.P.A. (Pat.) 1032, in 1950, chemical patent applications were commonly granted although no resulting end use was stated or the statement was in extremely broad terms.³ Taking this to be true [as it is], Bremner represented a deviation from established practice which the CCPA has now sought to remedy in part only to find that the Patent Office does not want to return to the beaten track. If usefulness was typically regarded as inherent during a long and prolific period of chemical research and development in this country, surely this is added reason why the Court's result should not be adopted until Congress expressly mandates it, presumably on the basis of empirical data which this Court does not possess. (My emphasis.]

Justice Harlan's footnote 3 cites articles in 41 JPOS 61, 66, 29 Geo.Wash.L.Rev. 87, 91, 53 Geo.L.J. 154, 183 and 14 Am. U.L.Rev. 78 and notes that the Government's brief in Manson was in accord in saying:

[I]t was apparently assumed by the Patent Office [prior to 1950] * * * that chemical compounds were necessarily useful * * * and that specific inquiry beyond the success of the process was therefore unnecessary * * *. [My emphasis.]

A further authority on this subject is Irving Marcus, Manager, General Organic Chemistry Examining Group, Group 120 of the Patent Office, who signed the Examiner's Answers in this case, author of "The Patent Office and Pharmaceutical Invention," 47 JPOS 669, a paper read at the 175th Anniversary Symposium in April 1965. The situation during a period of indefinite extent, but clearly bracketing the passage of the Patent Act of 1952, is thus described by Mr. Marcus (p. 672):

The compound cases were treated in a different manner [from pharmaceutical composition and method of therapeutic use cases]. In spite of disclosures stating merely "useful as pharmaceuticals or in the preparation of pharmaceuticals," [i. e., as "intermediates"] the compounds were allowed as being for useful inventions. There was very little objection to such disclosures and our files are full of patents with these vague disclosures.

It is not the statutes or the decisional law of courts of law which have changed, but Patent Office decisions and policies. The only question here, of course, is what are the statutory requirements. The present applications of Kirk and Joly are "compound cases" of the type referred to by Mr. Marcus.

A contemporaneous historical news item on the change in Patent Office policy appears in Chemical and Engineering News for December 20, 1954, at p. 5046, where Mr. Stone, Supervisory Examiner for the chemical divisions, is quoted as saying:

Until the Bremner case several years ago, which made it clear that a statement of utility must be included in a chemical patent, it was almost completely ignored. Publication of the Tolkmith case last September tightens up this requirement even more by demanding a specific utility. [Emphasis ours.]

Ex parte Tolkmith, 102 USPQ 464 (1954), was a Patent Office Board of Appeals decision involving an application containing an application containing claims to a compound and containing an allegation of use as an intermediate and as a constituent of parasiticide compositions, deemed insufficient under 35 U.S.C. § 112, the board referring vaguely to the requirement for disclosure of "utility" but making no reference to 35 USC 101. The examiner relied on Bremner. The board supported his rejection, adding reference to Avakian v. Fahrenbach (unpublished, MS Decisions Vol. 172, 425, 426, Comm'r. 1951).

In an article entitled "Adequacy of Disclosure as Regards Specific Embodiment and Use of Invention," by Wolffe, a member of the Tolkmith board, 41 JPOS 61 at 66 (a talk given April 17, 1958) is the statement:

In many cases the manner in which an invention may be used to advantage is so obvious that the specification is not objected to even if it does not describe a particular use. * * * Numerous patents on alloys which do not specifically describe the particular use to which the alloys may be applied have been granted.

Until recently it was also rather common to get patents on chemical compounds in cases where no use was indicated for the claimed compounds or in which a very broad indication or suggestion as to use was included in the application. Two recent decisions, one by the Court of Customs and Patent Appeals [Bremner] and one by the Commissioner of Patents [Avakian v. Fahrenbach], have put an end to this practice. [Emphasis mine.]

Wolffe interestingly reports that the examiner in the Avakian case took the position that the Bremner case did not apply to chemical compounds! (P. 67.) The examiner had said, "Organic compounds are inherently useful as intermediates for preparing other compounds and this inherent utility satisfies the statutory requirement." (My emphasis.) That is the situation with respect to the administration of the patent law before some unidentifiable upper echelon in the Patent Office turned the thumb screws on the chemists. It did so with no mandate from Congress or the courts. It just arbitrarily decided to change the law.

For the sake of historical accuracy it should be noted that Bremner set out no requirement for a minimum quantum of utility and no definite test. All it said was that a utility must be asserted and indicated. Nelson, moreover, fully accepted Bremner (see the section of the opinion entitled "The Bremner Case * * *").

What actually happened in the internal administration of the law by the Patent Office was that, building on what it imagined or wished Bremner to say, and a not very definitive ruling in an interference by an Assistant Commissioner in Avakian v. Fahrenbach,⁴ the Patent Office began in Tolkmith a steady escalation of the requirements for disclosures of "utility," raising them above anything required by the statute or by Bremner, and developing its own brand new theories and philosophy about what the statute means by "useful." In the process, as we learned from the Nelson record and observed on many other occasions, confusion worse confounded was generated by cross-breeding sections 101 and 112, commingling the requirements for utility, disclosure of how to use, and best mode disclosure, with the result that we tried to lay down some guidelines in Nelson to separate these discrete statutory requirements. In our 1958 opinion in that case (not published until later because of rehearing), we first pointed out that in the preceding five years or so the Patent Office had gotten out of line with the century-old course of the patent law.

Nelson's first application was filed in 1951 just when this shift was beginning to take place. The shift was first given general publicity by Commissioner Watson in a portion of an unpublished speech delivered by him in Atlantic City September 19, 1956, to the Division of Medicinal Chemistry of the American Chemical Society, at which time he stated that this then new policy, well known to be under criticism, was still being studied "with care." As to the previously obtaining practice he said:

For some time in the past very little attention was paid to the requirement for a disclosure of utility in chemical cases. Some chemical patents were issued with specifications reciting the barest suggestions of uses for the new compounds claimed, or even without uses being stated at all. It was generally the position of the Patent Office that a chemical compound could be regarded as an intermediate substance useful in the preparation of other compounds, since it was regarded as obvious that any organic compound could be so used. Ex parte Watt, 1944 C.D. 5, 63 USPQ 163.

And such was also the view of the law taken by the courts. Potter v. Tone, supra. Reviewing that speech makes it appear that what was really concerning the Patent Office, which blurred into other "chemical" cases, was the desirability of full and complete descriptions of the utility and manner of using pharmaceutical preparations intended for human use as medicines. This is a very different problem from the broad question of statutory usefulness.

Historically, I find it insupportable to say that Nelson started a "trend." The flare-up of utility rejections during a period of four or five years — but which will now, under the majority decisions, continue indefinitely and with no clear guidelines — was in fact an innovation in a stable interpretation of the word "useful" in the statute which had prevailed for over a century, both in the Patent Office and the courts. Nelson reviews this history under the heading "Utility." For an earlier brief review, see "Comparative Utility as a Requisite of Patentability," by C. O. Marshall, 1 JPOS 550, 553 et seq. (1919). It behooves those who would speak with authority on what "useful" means in patent law to consult some of the ample history of the subject and it is hoped that the foregoing puts the place of the Nelson opinion in this development in clearer perspective.

As may be imagined, the self-induced change in position on the part of the Patent Office with respect to what the law requires by way of disclosures of utility in chemical applications has contributed heavily to the disproportionate number of appeals in chemical cases. The majority decisions and their inconsistency with other holdings not overruled are not calculated to change that picture.

The differences between this case and Manson are far from being aptly described — and thus the majority describes them in lawyer's classic brush-off terms — as "highly technical procedural differences." It is naive to assume that the Supreme Court would have decided this case as it did Manson or would have uttered the same sort of supporting reasoning with respect to it. Different facts call for different decisions which call forth different rationalizations, as anyone knows who has ever written an opinion. The question here is not whether a second and later applicant with no disclosure of utility for the product of a process should be allowed to have an interference with a patentee who had a good disclosure, with the attendant possibility of taking the patent away from him. That was the real issue in Manson. The issue here is quite different: whether existing specific disclosure of the utilities of new compounds, not yet patented to anyone else, as intermediates to make specific other compounds is a sufficient disclosure to support a first patent on an otherwise patentable (i. e., new and unobvious) compound. Utility, of course, is but one prerequisite to patentability. This question was not presented in Manson. We have no way of knowing how the Court would have decided it.

It is therefore clear, as I understand the principle of stare decisis, that there is no decision in Manson bearing on the sole issue in this case and it is, therefore, not controlling here. We are free to apply our reasoning to the set of facts before us. The words in Manson, on which the majority hangs its rationalization of a result which is but the full flowering of the dissenting opinions in Nelson, are not words of authority binding on us. Nor, in my judgment, because of several underlying erroneous factual assumptions, are they even words of wisdom.

I am constrained to align myself with the views expressed by Mr. Justice Harlan to which I refer as expressing views omitted here.

VI. There Is a Vast Legislative History on the Meaning of "Useful"

Though I am sure the majority think they are being most reasonable, adhering to principles embodied in the Constitution, and following what Congress "must have intended," in point of fact they are legislating and ignoring the law as Congress enacted it.

The Supreme Court in Manson found "no specific assistance in the legislative materials underlying § 101," which was a 1952 enactment. That is because the legislature was then taking no action with respect to that provision except to reenact it without change, wherefore the true "legislative materials" necessarily consist only of its long history of construction and repeated reenactment without change, rather than some revisor's note or testimony at a hearing. It is history one must consider, rather than one's inner consciousness and preconceptions.

The ABC's of the situation are as follows: (A) If one goes through the statutes, from the first one in 1790 to date, the simplest of all possible legislative situations is found. Through the course of 162 years of Congressional action (1790-1952), the identical term "useful" has been employed to describe one of the prerequisites to patentability. (B) If one then examines the interpretation of this term by the courts and the analyses of the courts' views by the text-writers, what is found is that the case law always was that any degree of utility to anybody was legal "utility." All this is analyzed in Nelson in detail. (C) Considering, finally, that the present statute, the Patent Act of 1952, § 101, was enacted without the slightest indication of any intent to change the law, as expressed in the cases, texts, and administrative practice, it is clear that the majority here is indulging in judicial law-making, as the majority in Manson would be if mere dictum in that opinion is raised to the dignity of "law." I think, in view of the long and clear course of legal history on the construction of "useful," that it would be improper to attribute such an intent to the Supreme Court.

The Patent Office and the majority are wont to mix up sections 101 and 112 on the "utility" issue and to find something more than can be found in 101 in the requirement of 112. The Nelson case briefs and record were replete with references to the non-existent "section 112 utility requirement." The argument was, and still seems to be, that the two sections are inseparable and each can be used to wash the other's hands — if you cannot find a requirement for "practical" utility in 101 (and you cannot) then you find it in 112. Judge Kirkpatrick voiced it in dissent in Nelson as follows (my emphasis):

Apparently unwilling to accept a mere statement in the application that the subject matter is useful, Congress added Section 112 which, in effect, requires the inventor to tell in his specification exactly how to make use of the invention.

* * * * * *

The requirements of Section 112 as to showing manner of using are inseparable from those of Section 101 as to usefulness. The provision of Section 112 that the specification shall describe the manner of using * * * certainly means, in view of Section 101, that the applicant must show how his invention can be employed usefully.

Which is going around in a circle, ending up finally in section 101, and begging the question as to what is meant by "useful."

Thoughtful analysis will show that the outstanding primary characteristic of the majority opinion is also begging the question on the meaning of "useful," "no known use," "only conjectural use," and "some specific use" without once explaining what is meant, leaving it to readers to formulate their own meanings according to their own notions. These terms, along with "specific," "currently available," and "practical" use can all be subsumed under the one label — "petitio principii." What the majority wishes to be the law applicable to any given fact situation is implicitly taken for granted. History and the case law as reported by every author who ever wrote a textbook provide a sounder working foundation and they are mostly reported in Nelson. They are unanimous in finding the law to be that any degree of utility, however slight, complies with the requirement that an invention be "useful." The majority has an undefined "quid pro quo" philosophy which simply cannot be squared with legal history.

Any effort to add to section 101 through section 112 must fail in any historically justifiable construction of the patent statute for the simple and controlling reasons that: (A) The relevant terms now in section 112 have also been substantially the same ever since they were first introduced into the statute in section 2 of the first Patent Act of 1790 and cast into approximately their present form in the revision act of 1836, section 6. (B) The interpretation of "useful" throughout the ensuing century and a half by the courts as including any use to anybody — including usefulness as an "intermediate" to a research chemist — was made notwithstanding the concurrent provisions of section 112 (§ 4888 of the Revised Statutes from 1874 to 1952, which contains the exact phraseology of § 112).

In considering this case-law history one must be alert, in order to escape mental elephant pits, to avoid being confused by opinions which are dealing not with utility per se but with the unobviousness issue (or its predecessors, the presence of "invention," or "inventivlevel" as Stringham calls it) in terms of degree of utility as an indication thereof. The same precaution is called for in deciding the patentability issue in current cases so as not to confound the requirement of section 101 with that of section 103. It has been pointed out time and again since the days of Justice Story, as fully discussed in Nelson, that degree of utility is of no public concern whatsoever. This elementary principle appears not to have gotten through to those who still talk of utility in terms of "quid pro quo" for a patent. The only quid pro quo demanded by statute is full disclosure of a new and unobvious invention which is of some use to someone. If it is of very little use, the patent will correspondingly be of very little value to the patentee, who has never been called on either to know or to explain all potential uses of his invention. The hard fact is he almost never knows the full extent of the utility until years after he makes his invention. Uses evolve after inventions are disclosed.

VII. The Supreme Court in Manson Did Not Hold That Disclosure of Use in Research Alone Is Non-compliance with the Statute. It Reserved That Question

The main thing to be remembered about the Manson opinion is that it speaks about a situation in which there was no disclosure of utility.

The Manson opinion is relatively short, as opinions go. It does not say much. The only point actually decided is that for the purposes of provoking an interference with a process claim in an issued patent an applicant for a patent on the same claim must disclose that the process produces a "useful" product, that it is not enough to assert the use of the product is obvious to the applicant, but some specific use must be mentioned (as Bremner said), at least in the absence of evidence that a specific use would be obvious.

Now, in the present cases specific uses for the claimed products are asserted. (In Joly processes for making the products are also claimed.) This is the first difference from Manson. To use the words of Manson, there exists disclosure of "utility greater than any adduced in the present case," which was zero. The next hurdle to surmount is the Manson reference to "a chemical compound whose sole `utility' consists of its potential role as an object of use testing" and a product of a process which "is useful only in the sense that it may be an object of scientific research." (My emphasis.)

People who look merely at the words of an opinion without regard to what a court does in trying to discover "law" are as far from its discovery as religious fundamentalists are from the discovery of "truth" in holy writ in insisting that the world was made in seven (7) days. With respect to what was actually in the collective mind of the Supreme Court majority when it talked of "use testing" and "scientific research" — which is something we can only surmise — the most significant act of the Court is manifest in its footnote 17 where it actually came to grips with decisions relating to "use testing" and "scientific research." It there lists four cases (there are really five as there are two companion Bergel cases, 292 F.2d 958, 48 CCPA 1101 and 292 F.2d 955, 48 CCPA 1102, both with the same issue, both opinions by Chief Judge Worley) in which the sole utility alleged for chemical compounds was as "an object of use testing," or "an object of scientific research" in laboratory animals, as specified in footnote 17. We held such utilities sufficient under section 101. As to these the Supreme Court majority was very careful to "express no view." This brings us to the contention of the majority here that the Manson decision demands assertion of a "specific" "practical utility" — whatever that is. Whatever it is, and neither Manson nor the majority give a clue, the contention simply cannot be made to jibe with the act of the Supreme Court in withholding judgment on the legal adequacy of disclosure of "scientific" use tests on laboratory animals (mice, rats, and rabbits) as a compliance with the statutory requirement that an invention be "useful." Useful to whom and for what? In the footnote 17 cases there is only one possible answer and that is useful to research workers in their research. There is nothing "practical" about these uses.

It is clear to me from its acts that the Supreme Court majority, regardless of some of its words, pleasing though they may be to the Nelson dissenters, deliberately refrained from passing on fact situations such as we have in the instant cases, where there are specific disclosures in the specifications of uses to chemists or research workers, namely, use to make other specifically named compounds, coupled with a Patent Office admission of record that how to use for that purpose under 35 U.S.C. § 112 is not an issue. Lest they be forgotten, I quote those disclosures, simplified by omission of the involved chemical names which are replaced by the bracketed clauses and retaining the letter designations in parentheses used by the board in its opinion:

(c) [The spirostane series, which includes claim 11] are of value as intermediates in the preparation of 6-methylated aromatic steroid hormones * * *

(d) [The androstanes, claims 25, 26, 28, 29, 45] are of value as intermediates in the preparation of 6-methylated aromatic steroidal hormones, into which they may be converted by reaction in solution in acetic anhydride with toluenep-sulphonic acid, as intermediates in the preparation of biologically active compounds and in some cases on account of their biological properties.

(e) [The pregnane series, claims 39, 41] are of value as intermediates in the preparation of compounds with valuable biological properties such as progestational properties or properties associated with the adreno-cortical hormones or as intermediates in the preparation of compounds with useful biological properties.

This is a far cry from the total silence on use in Manson and it is more than a full compliance with the rule of Bremner. VIII. These Cases Create Unworkable Administrative Problems. If They Stand, the Congress Should Act

The rule of the majority, with its impossible-to-define criteria, sets up an administratively impossible line-drawing problem. What is "practical" utility? My view, which I believe is clearly in accord with legal history, is that a new steroid, which a research scientist can use at once in his daily work, and which a chemical manufacturer, in accordance with common commercial practice, will be happy to sell him without knowing what is to be done with it, has, in Manson terms, "currently available," "substantial," "practical" and "specific" utility — to the research scientists as the relevant segment of the public.

I am unable to determine how or where to draw the line between such de facto useful compounds and those involved in In re Folkers, 344 F.2d 970, 52 CCPA 1269 (1965), opinion by Worley, C. J., for one example, wherein this court unanimously accepted as adequate a showing that the compounds were "useful as oxidizing or reducing agents," which is no more than a statement that the compounds are capable of two kinds of basic chemical reactions, and that they were "useful to the biochemist in the study of enzyme systems," which is nothing but "scientific research" or "use testing." The Folkers application, moreover, did not even state these utilities. It merely stated properties from which the court was willing to infer "some uses." The majority has seen no need to overrule this decision or to find it inconsistent with Manson. It has shown no desire to be consistent. If that is to be an indication of where to draw the line, I fail to see how either the inventors or the chemical group Patent Office examiners will be able to follow it. The law should be such, insofar as possible, that the examiners can follow it "strictly," as admonished by the Commissioner and by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 15 L.Ed.2d 545.

The patent system operated very well — indeed, a lot better and at a lower cost in time and money, with less trouble and fewer appeals — before the Patent Office, not so very long ago, using Bremner as an excuse but going far beyond its requirements, initiated its get-tough policy on chemical utility, a policy bringing confusion in its train as the appeals to this court during the past decade well illustrate. From the practical administrative standpoint, the best rule, which is what we had in substance until 1950, is that chemical compounds are per se "useful" within the meaning of 35 U.S.C. § 101. Since that was the rule in effect when Congress reenacted the "useful" and "how to use" provisions in 1952, in the same terms which had been in the statute from the beginning, there is no basis for assuming any "intent" that there should be a different rule.

If this cannot be brought to pass by court decisions, then the problem should be submitted to Congress. An effective statute which would restore the law to what it was for a century and a half would merely have to provide: (a) that new and unobvious chemical compounds are per se useful within the meaning of 35 U.S.C. § 101 and (b) that it shall be conclusively presumed that chemists will know how to use them within the meaning of 35 U.S.C. § 112.

Such restoration of the law, however accomplished, would have the salutary effects of: (1) rendering the law definite, (2) removing a burden from the examining corps it is not equipped to deal with effectively, (3) reducing appeals, (4) speeding up disclosure with consequent facilitation of research, (5) increasing the incentives to produce and disclose new compounds, (6) encouraging the production and marketing of new compounds for experimental purposes which will develop new uses for them, thus advancing the art and advantaging the public, (7) putting an end to the wasting of time and money in concocting uses merely for compliance with Patent Office requirements, a practice hereinafter exemplified, and (8) stopping the present illegal practice of requiring two inventions to be made before one can be patented — inventions often made by different people working for different employers, one inventing the compound and another discovering the use.

The last point is illustrated by the following from a paper read by Joseph Gray Jackson, distinguished Philadelphia patent lawyer and teacher, at an Institute on Patent Law of the Southwestern Legal Foundation, Dallas, Texas, March 30, 1967. Discussing Manson he said (all emphasis mine):

It thus would seem that utility from the standpoint of aiding the research community is a highly undeveloped and uncertain area in the Patent Law.

As a practical matter, if you invent a new machine for research, such as an electron microscope, an electron probe analyzer or a chromatograph, it is believed that the Patent Office and the courts will readily accept the idea that it is useful without question as to the utility of the scientific information derived in a particular process or product.

If the invention relates to a process which is useful only in research, the Patent Law requires utility for the product. [Citing Manson.] If the invention relates to a new composition whose utility exists solely in research, for example, a new chemical intermediate, there is grave doubt whether this is enough utility unless the intermediate is useful to produce products which have themselves known utility.

If it is to be the law that a new intermediate for which no known useful end product exists is not to be patentable until such useful end product is developed, in the meantime we will have a strange situation. [Mr. Jackson had not yet learned of these decisions.] The intermediate will be a potential invention held in suspended animation. It is not a patentable invention. The inventor of the intermediate will have to wait until someone produces a useful product from the intermediate. Then we will have a serious question as to who has made the invention of the intermediate. If the useful end product is unobvious, it would seem that the inventor of the intermediate will have to join the inventor of the end product with him in order to get a valid patent. On the other hand, if the useful end product is obvious from the knowledge of the intermediate, it would seem that the inventor of the intermediate can get a valid patent as a sole inventor by disclosing the useful end product. We will also have challenging problems about statutory bars. Can it be possible that publication or public use of the intermediate more than one year prior to the discovery of any useful end product will create a statutory bar against patenting the intermediate before it is possible to file a valid patent application on the intermediate? It seems to me that you cannot create a statutory bar until one year after it was possible for the inventor of the intermediate to file an application for a valid patent.

An elaborate ritual dance is required to satisfy the Patent Office as to the disclosure of utility of a drug. If the drug is to be applied to humans, the Patent Office usually requires clinical tests, that is, tests on human patients. It is difficult to get the Patent Office to accept proof of utility based on experiments performed on animals alone, unless of course the drug is a veterinary drug, or relates to something like an X-ray opacifier which will foreseeably perform the same way on animals as on humans. The reservation in the Manson case of the question as to whether treatment of tumors in mice might be accepted as utility, throws further doubt as to how far animal tests will be effective.

In the foregoing we see again how the majority decisions create a situation in which it takes two inventions to get one patent, which may be made by different people at different times. Mr. Jackson has not even fully developed the problems. If the compound is claimed as the invention, how can the discoverer of its use be joined as an inventor, since he did not invent the compound which may have been delivered to him as the invention of a stranger? If it is the use that is claimed (as a process, 35 U.S.C. § 100(b)), how can the inventor of the compound be joined, since he did not discover it? There is no "joint" invention in such cases. See 35 U.S.C. § 102(f), which expressly prohibits claiming, or invalidates a patent claiming, that which the applicant or patentee "did not himself invent." Cf. 35 U.S.C. § 282(2).

Thus the rule of the majority, and of Manson if read as the majority reads it, plays into the hands of the large to gigantic corporation possessed not only of chemical manufacturing facilities but, in cases involving subject matter such as that here, biological screening and testing facilities — even clinical testing facilities — as well.

The trouble with the majority rule would seem to stem from the fact that the authors of the opinions do not, or do not wish to, see the consequences of their decisions, an example being developed in the next section.

IX. The Majority Decisions Are an Incentive to the Contriving of Phony Utilities, Withholding of Information from Applications, and Delay in Disclosure of New Compounds

When shortly after 1950 the consistent construction of the statutory term "useful" which had prevailed since 1790 began to be upset by the Patent Office — and it was not altered anywhere else that I know of or anywhere else that any brief has shown — the applicants and potential applicants for chemical compound patents began to ponder the problem of what to do.

I have before me a 6-page single-spaced internal memorandum by one of them, a research chemist in one of the country's largest chemical companies, directed to company patent counsel, dated July 31, 1957, a few months before the Nelson case was argued. I know no better way to make clear the mistaken philosophy5 of the majority and to show how it will work in the commercial world than to extract the following passages (my emphasis):

A well-characterized organic compound is something which the chemist, i. e., a person skilled in the art, definitely knows how to use. He can esterify or etherify a hydroxy radical present in a compound, he can amidate or alkylate an amino radical, he knows how to introduce a great variety of substituents into a benzene ring, and he knows enough about typical reactions and typical organic compounds to start with a hitherto unknown compound and proceed through as many as 30 or 50 steps in order to gain a desired end compound. Hence, to the chemist any new organic compound is a tool which he can use * * *. Is it necessary that we resort to a utility which can be understood by the non-skilled? * * * Certainly, insofar as the public is concerned, it would be wiser and more appropriate to state simply that the new chemical compound is useful as an intermediate for preparing other compounds. In the mechanical art, claims are readily allowed to individual members of machines even though the member in itself has no direct utility. A valve is ineffective unless it is connected to a conduit, a rivet in itself serves no purpose without the members which it will unite, and a link is similarly ineffective. * * * Similarly, in chemistry, there may be thousands of compounds which may be regarded as ineffective in themselves but which can be converted by methods as well known to the chemist as is screwing, riveting, and jointing known to the mechanic to give products which constitute as much of a contribution to the so-called useful arts as does a finished machine.

So much by way of background. But then we come to the practical problem posed by the rule being promulgated by the majority — a rule of great vagueness and no definite limits by reason of reliance on the terms "practical," "substantial," "specific," and "currently available." They are nothing but trouble-makers, as time will amply demonstrate.

Any chemical compound is also useful as a material with which research in allied fields is conducted. New fuels are available because new compounds were available for testing in fuels. New biological toxicants are serving the public because new compounds had been available for testing against bacteria, insects and weeds. New plastics and fibrous materials are offered because new chemical compounds had been provided for testing. The public is well aware of the fact that the provision of new compounds for testing purposes contributes to national wealth and it realizes [would that that segment of it on courts did so] that its progress depends upon its capital of new compounds to be tested. Each new compound adds to the public's capital; and in so doing, it becomes useful.

We now come to the crux of the matter in the two concluding paragraphs and it will be clear why I cannot identify my source. What these paragraphs describe is already being done on an increasing scale and the majority opinion will have the effect of accelerating it. It is my view that it is a social evil and contrary to sound public policy. It is one of the inevitable "implications of a decision" like the majority decision here.

In spite of the fact that research in the allied arts cannot proceed unless there is a constant replenishment of compounds to be tested, we have somehow failed to consider new compounds as useful tools in these arts. At the present time we resort to artificialities in order to justify o