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PATENT || BGM
APPLICATION OF KLAUS HAFNER requirements of law engrafted on sections 101 and 112
410 F.2d 1403| June 5, 1969| RICH J by the decision of the Supreme Court in Brenner v.
Germans; Utility; How to Use Manson, 383 U.S. 519, 86 S. Ct. 1033, 16 L. Ed. 2d 69
FACTS (1966), with respect to the meaning to be given to the
words "useful" and "use" in those sections. In
APPELLANT FILED A PATENT IN US, BUT IT DID’NT construing them, we must of course, give them the
CONTAIN ANY DISCLOSURE OF UTILITY USE. meaning demanded by the Supreme Court.
On August 17, 1959, appellant filed two German
applications, one relating to certain fulvene CONTENTION: FILING DATE OF GERMAN
derivatives and the other to certain cyclopentadiene APPLICATION WILL APPLY
derivatives. By appellant's admission, neither German Appellant argues that the instant application is entitled
application contained any disclosure of utility, such to the filing date of the German applications even
disclosure having been unnecessary in Germany. On though we find it is not entitled to the date of the
August 1, 1960, within one year of the German filings, parent U. S. application.
appellant filed a U. S. application (the "parent" of the
instant application) combining the two German ISSUE
disclosures.
Is the parent application of U.S. patent valid? (NO)
REJECTED BECAUSE OF FAILURE TO DISCLOSE ITS
USE. HELD
Although the parent application alleged that the NO
claimed compounds are useful as intermediates for
preparing certain artificial resins and indicated a REGARDING THE DOUBLE STANDARD CONTENTION
manner in which such resins can be prepared, all claims OF APPELANT.
were finally rejected under 35 U.S.C. § 112 because of Standing alone, appellant's argument against a double
an alleged failure of the specification to disclose how standard is a plausible proposition. However, when
those resins might be put to use. considered in light of the specific provisions of § 102,
and § 112 as it has been interpreted, it is seen to be
ANOTHER APPLICATION WAS FILED AFTER A
untenable — § 112 provides that the specification must
PUBLICATION OF ITS APPLICATION.
More than one year thereafter, on July 24, 1964, the enable one skilled in the art to "use" the invention
instant continuation-in-part application was filed. It whereas § 102 makes no such requirement as to an
contains a reference to the parent application, and a anticipatory disclosure. the double standard which
claim for priority going back to the German application appellant criticizes is now, implicitly if not explicitly,
was made at the time of filing. The instant application required by law, at least in situations such as we
contains an amplified disclosure of utility and "how have here, although the "invention" per se claimed
to use," the adequacy of which, under 35 U.S.C. § is fully disclosed and though the manner of
101 and § 112 respectively, has not been "making," as distinguished from "using," the
questioned. invention is also fully disclosed or is obvious.
THE APPLEALED CLAIM IS STILL REJECTED.
Appellant urges that these references do not qualify as THE REQUIREMENT OF “HOW TO USE” WAS NOT
“enabling” disclosures because they allegedly do not MET.
“teach the public `how to use’ the invention.” the examiner held appellant not entitled to the filing
date of either his German applications or his parent U.
CONTENTION: NO TO DOUBLE STANDARD! S. application because the latter allegedly did not
In essence, appellant is contending that a double comply with § 112 (as required by § 120) in that the
standard should not be applied in determining the "how to use" requirement of § 112 was not met.
adequacy of a disclosure to anticipate under § 102, on
the one hand, and to support the patentability of a claim The only "how to use" disclosure in the parent
under § 112 on the other. He feels that a disclosure application reads:
adequate for the one purpose is necessarily adequate

for the other but, unhappily for him, this is not so. As
The new products are valuable intermediate products
we shall develop, a disclosure lacking a teaching of how
to use a fully disclosed compound for a specific, especially for preparing artificial resins and plastic
substantial utility or of how to use for such purpose a masses such as unsaturated linear or cross-linked long-
compound produced by a fully disclosed process is, chained acetal resins or mixed acetal-polyester resins
under the present state of the law, entirely adequate to which may be copolymerized with monomeric vinyl
anticipate a claim to either the product or the process compounds such as styrene or diallylphthalate.
and, at the same time, entirely inadequate to support
the allowance of such a claim. This is so because of the

BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY
(29) PATENT || BGM
that the ”how to use” requirement of § 112 was not
THERE IS NO EXPRESS DISCLOSURE OF A SPECIFIC met.
USE.
The examiner and board were of the view that, AFFIRMED
although persons skilled in the art might well have no
difficulty preparing acetal resins from the compounds
of appellant's invention, the parent application
disclosure was still inadequate under § 112 because
there is no express disclosure of a specific use to which
the resulting resins can be put, and appellant has
not shown that such a use would be obvious.

When considered in light of the specific provisions of §
102, and § 112 as it has been interpreted, it is seen to
be untenable — § 112 provides that the specification
must enable one skilled in the art to “use” the
invention whereas § 102 makes no such
requirement as to an anticipatory disclosure. Thus,
the double standard which appellant criticizes is now,
implicitly if not explicitly, required by law, at least in
situations such as we have here, although the
“invention” per se claimed is fully disclosed and though
the manner of “making,” as distinguished from “using,”
the invention is also fully disclosed or is obvious.

ALL THE REQUIREMENTS UNDER THE LAW SHOULD
BE COMPLIED. THE APPELANTS FAILED TO DO SO.
While arguing that his parent application did in fact
comply with the first paragraph of § 112, appellant also
maintains that § 120 only requires that a “previously
filed” U. S. application disclose the ”invention” as
required by § 112 and does not require that it also
disclose “the manner and process of making and
using it” (emphasis added).Appellant correctly points
out that the utility of an invention is distinct from “the
invention” per se and from this argues that only “the
invention” need be disclosed. If § 120 spoke only of an
“invention disclosed in an application previously filed
in the United States,” which it does not, appellant’s
interpretation might well be unassailable. This section,
however, also makes specific reference to the first
paragraph of § 112. From this we think it clear that §
120 means that, to be entitled to the benefits provided
by that section, the invention disclosed in the
“previously filed” application must be described therein
in such a manner as to satisfy all the requirements of
the first paragraph of § 112 as the courts have
construed it, including that which requires the
description to be sufficient to enable one skilled in
the art to use the same for a legally adequate utility.

PARENT APPLICATION IS FATALLY DEFECTIVE.
The examiner held appellant not entitled to the
filing date of either his German applications or his
parent U. S. application because the latter allegedly
did not comply with § 112 (as required by § 120) in

BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY