Application of Nathan

9 Citing cases

  1. Spero v. Ringold

    377 F.2d 652 (C.C.P.A. 1967)   Cited 22 times
    In Spero, the questions before the court were whether Spero's specification supported a count drawn to a steroid wherein a certain methyl group had an alpha steric configuration and whether the identical disclosure appearing in a working draft of the application established conception as of the date of the draft.

    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.

  2. Kennecott Corp. v. Kyocera Intern., Inc.

    835 F.2d 1419 (Fed. Cir. 1987)   Cited 30 times   1 Legal Analyses
    In Kennecott, where the term "equiaxed microstructure" was expressly used to describe an invention for the first time in a CIP, the CIP was entitled to the benefit of the filing date of the parent patent because the description was inherent in the structure produced in the original parent patent.

    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.

  3. Shu-Hui Chen v. Bouchard

    347 F.3d 1299 (Fed. Cir. 2003)   Cited 55 times   3 Legal Analyses
    Holding lab notebooks to be uncorroborated where their authors could not produce witnesses to verify their contents

    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."

  4. Ralston Purina Co. v. Far-Mar-Co, Inc.

    772 F.2d 1570 (Fed. Cir. 1985)   Cited 155 times   1 Legal Analyses
    Holding that " party asserting invalidity based on 35 U.S. § 112 bears no less a burden and no fewer responsibilities than any other patent challenger"

    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.

  5. Standard Oil Co. v. Montedison, S.p.A.

    664 F.2d 356 (3d Cir. 1981)   Cited 29 times
    Rejecting the argument that the district court should have required the party to explain why it was offering evidence for the first time before the district court and holding that "new expert testimony is clearly admissible in a section 146 action without such justification"

    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.

  6. Application of Sulkowski

    487 F.2d 920 (C.C.P.A. 1973)

    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.

  7. Application of Fisher

    427 F.2d 833 (C.C.P.A. 1970)   Cited 59 times   2 Legal Analyses
    Holding that the appellant, who was the first to achieve a potency of greater than 1.0 for adrenocorticotrophic hormones ("ACTHs"), had not enabled the preparation of ACTHs having potencies much greater than 2.3, and the claim recitations of potency of "at least 1" rendered the claims insufficiently supported under the first paragraph of 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 * * *."

  8. Application of Magerlein

    346 F.2d 609 (C.C.P.A. 1965)   Cited 5 times

    * * * * * * 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 .

  9. Standard Oil Company v. Montedison

    494 F. Supp. 370 (D. Del. 1980)   Cited 23 times
    Noting Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033

    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).