Wednesday, January 16, 2013

Remembering F.A. Cotton and patent law

From time to time, IPBiz gets a hit for the post  Death of famous chemistry prof F.A. Cotton investigated

Of Cotton and patent law, recall the case HOECHST CELANESE CORP. v. BP CHEMS. LTD.
 To support this conclusion, BP has offered the opinion of a distinguished chemist, Dr. F.A. Cotton. As to Claim 9, Dr. Cotton points out that all of the specific elements of Claim 9 are described in the '73 application. However, Dr. Cotton's analysis neglects to address the fact that the '73 application limits itself to esters and ethers as the carbonylatable reactants, and limits its function to the production of anhydrides, whereas Claim 9 permits the use of any reactant, for any type of carbonylation process. That Claim 9 is so broad as to encompass the process described in the '73 application does not mean that the application described the breadth of Claim 9. Rather, the Federal Circuit and its predecessor courts have repeatedly stated that, while the description of an invention using a given species may enable the practice of an invention using any of the genus to which that species belongs, it does not necessarily describe the broader invention. Vas-Cath, 935 F.2d at 1561-62. In fact, a parent application's disclosure of the use of a chemical species can even be prior art against a subsequent claim to the encompassing genus, while still not describing the genus so as to allow the later claim to assert the parent's filing date. Chester v. Miller906 F.2d 1574, 1577 (Fed. Cir. 1990); In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989); In re Lukach, 58 C.C.P.A. 1233, 442 F.2d 967, 968-70 (C.C.P.A. 1971); see In re DiLeone,436 F.2d 1033, 1034 (C.C.P.A. 1971) (DiLeone I) (affirming rejection of claim encompassing broad chemical class, where specification described only a species); In re Ahlbrecht, 58 C.C.P.A. 848, 435 F.2d 908, 910-12 (C.C.P.A. 1971) (affirming rejection of ? 120 claim because later application described broader class of esters than that described in parent application); In re Ruscetta, 45 C.C.P.A. 968, 255 F.2d 687 (C.C.P.A. 1958) (affirming rejection of ? 120 claim because parent description of method of etching tantalum did not describe use of method with other metals of same class, even though such use would have been obvious to try).

 Dr. Cotton's analysis of the '73 application with respect to Claim 1 also ignores the relevant legal test, confusing the description requirement for the enablement requirement. Dr. Cotton asserts that:

In my opinion, the '73 application reasonably conveys to one skilled in the art on August 27, 1973 that the rhodium catalyst systems described in the '73 application, including the rhodium-lithium iodide catalyst system of claim 1, were suitable for use in the then well-known carbonylation of alkyl alcohols and olefins.

 Dr. Cotton supports this opinion with evidence that the rhodium-catalyzed carbonylation of alkyl alcohols and olefins was well-known at the time. He further contends that the '73 application's description of alcohols and water as contaminants in "the production of the desired anhydride product" is "not inconsistent" with this opinion, because it was readily understood that carbonylation of alcohols in the presence of carbon monoxide and a rhodium-halide catalyst yielded carboxylic acids. Therefore, according to the opinion's logic, once the '73 application revealed the use of lithium iodide in a specific rhodium-catalyzed carbonylation process, an artisan would have recognized that the catalyst was also "suitable" for use in other rhodium-catalyzed carbonylation processes.
 As discussed above, however, the test for the written description requirement is not whether a skilled artisan would have known that lithium iodide was "suitable" in similar processes; the test is whether the artisan would have known, from reading the description, that the inventor of the '73 application did know of this suitability -- and hence had possession of this invention. One oft-quoted example of this distinction is:

Consider the case where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B, and C has not been described.

 In re DiLeone, 436 F.2d 1404, 1405 n.1 (C.C.P.A. 1971) (DiLeone II). By analogy, Dr. Cotton's testimony teaches that an artisan would have known that, in order to make carboxylic acids, alcohols and olefins might be used in place of esters and ethers in the anhydride-making process described by the '73 application. This is not evidence, however, that the acid-making process has been described. "That a person skilled in the art might realize from reading the disclosure that such a step is possible is not sufficient indication to that person that the step is part of the applicant's invention." In re Winkhaus, 527 F.2d 637, 640 (C.C.P.A. 1975) (affirming rejection of broadening amendment).


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