The board also found that testimony taken by Spero shows that use of the 6-methyl progesterone precursor in Example 12 inherently produces a 6-methyl compound within the count. Therefore, the board found that the count is inherently disclosed in serial No. 623,774, In re Nathan, 328 F.2d 1005, 51 CCPA 1059. However, the board refused to accept Spero's Exhibit 4 as proof of an earlier date of conception. While the board apparently assumed Exhibit 4 to be identical with Spero's parent application, it nevertheless concluded that the exhibit failed to establish a date of conception because it "does not disclose the invention.
The Court of Customs and Patent Appeals did not adopt the position that is now urged by Kyocera. In In re Nathan, 328 F.2d 1005, 1008-09, 140 USPQ 601, 604 (CCPA 1964), the court held that the later-added limitation to the claims of the compound's alpha orientation was "an inherent characteristic" of the claimed subject matter, and reversed a new matter rejection. The Nathan court explained that "a subsequent clarification of or a change in an original disclosure does not necessarily make that original disclosure fatally defective." Id. at 1008, 140 USPQ at 603.
We also agree with Bouchard that the present case is readily distinguishable from all of the cases relied on by Chen. For example, in In re Nathan, 51 C.C.P.A. 1059, 328 F.2d 1005 (1964), the Board had affirmed a new matter rejection raised when the appellants sought to amend their specification and claims to indicate the steric orientation of the 2-halo groups in the claimed 2-halo steroids following a rejection for indefiniteness. In reversing the Board's decision, the court held that "the amendatory material . . . is concerned with an inherent characteristic of an illustrative product of appellants' invention already sufficiently identified in appellants' original disclosure as filed."
However, claims with no explicit disclosure must find inherent support in the prior application, Pingree v. Hull, 518 F.2d 624, 186 USPQ 248 (CCPA 1975); and one skilled in the art, following the teaching of the prior application must be able to produce the subject matter of the later claims. In re Magerlein, 346 F.2d 609, 612, 145 USPQ 683, 685 (CCPA 1965); In re Nathan, 328 F.2d 1005, 1008-09, 140 USPQ 601, 604 (CCPA 1964). Thus, the test for determining whether the disclosure complies with the written description of the invention requirement is whether it would have reasonably conveyed to one of ordinary skill that the inventor invented the later-claimed subject matter.
The court stated that the testimony showed that the compound was always present in the end product, but there was no discussion whether this conclusion was reached from invariably successful sets of experiments. Similarly in In re Nathan, 328 F.2d 1005 (Cust. Pat.App. 1964), the court considered an affidavit reporting the results of subsequent experiments in reaching its conclusion of disclosure of an inherent characteristic of appellants' invention without any discussion concerning possible unsuccessful results. In Wagoner v. Barger, 463 F.2d 1377 (Cust.
In support, she cited Riester v. Kendall, 159 F.2d 732, 34 CCPA 859 (1947), which states that a disclosure "will not be held to be insufficient for constructive reduction to practice by reason of a mistake in [the] specification which is obvious to a person skilled in the art." She considered the same criteria to be followed in In re Nathan, 328 F.2d 1005, 51 CCPA 1059 (1964), which cites Riester with approval and in Spero v. Ringold, 377 F.2d 652, 54 CCPA 1407 (1967). The latter stated that the adequacy of the disclosure in a parent application is determined by what has been taught by the parent specification to "those skilled in the art to which it pertains," citing 35 U.S.C. § 112.
Appellant contended that the parent application inherently disclosed products meeting the terms of claim 4, even though appellant did not know the chemical structure of those products when the parent application was filed. Appellant cited several cases in support of the proposition that inherent disclosure is sufficient under 35 U.S.C. § 112, including Riester v. Kendall, 159 F.2d 732, 34 CC PA 859 (1947), and In re Nathan, 328 F.2d 1005, 51 CCPA 1059 (1964). The board did not dispute the correctness of this proposition, but found that "it has not been established that the parent disclosures inherently produce the claimed products * * *."
* * * * * * Appellants urge that our decision in In re Nathan, 328 F.2d 1005, 51 CCPA 1059, is dispositive of the issue in this case. There, the appellants found themselves in a similar predicament when the examiner and board refused to recognize an amendment and affidavit establishing the orientation of a 2-halo substituent in a steroid molecule as inherently .
Rather, all the evidence was directed to showing the similarities between any resulting product that complied with the disclosure and the product described by the Count. 328 F.2d 1005, 51 CCPA 1059 (1964).See also Spero v. Ringold, 377 F.2d 652, 54 CCPA 1407 (1967); In re Magerlein, 346 F.2d 609, 52 CCPA 1637 (1965).