Monsanto Company v. Commissioner of Patents

The judgment of Laskin C.J. and Ritchie, Pigeon, Beetz, Estey, Pratte and McIntyre JJ. was delivered by

1. The method of inhibiting premature vulcanization of a vulcanizable diene rubber containing a vulcanizing agent and an organic vulcanization accelerating agent, which comprises:

incorporating therein in an amount effective to inhibit premature vulcanization a compound of the formula R1-S-R-S-R1 wherein R contains 1 to 8 carbon atoms and is alkylene, arylene, or cycloalkylene and R1 is an imido radical.

9. A compound of the formula

R1-S-R-S-R1

wherein R contains 1 to 8 carbon atoms and is alkylene, arylene, or cycloalkylene and R1 is an imido radical.

16. The product of claim 9, wherein the di-imido compound is chosen from the group consisting of:

Here follows a list of 126 different chemical compounds described by their scientific names.

These product claims are much too broad in view of the disclosure which only discloses the preparation of three of the compounds being claimed.

Product claim 16 is directed to 126 species altogether; they are just recited from the disclosure. As previously mentioned only the preparation of three of these species

is exemplified and have a physical constant (melting point) and elemental analyses (for two species only). There is no way of proving that all these species have been prepared for there are no methods of preparation, physical constants and/or elemental analyses results given. Claims must be adequately supported by the disclosure (Rule 25 under the Patent Act)and when 126 species are being claimed in the broad product claim, the specific disclosure of the preparation of three species only is insufficient. The invention claimed is far from being fully described and hence this is contrary to Rule 25 under the Patent Act. The exemplification of three compounds is certainly not sufficient to support the vast expanse of subject matter covered by these claims and does not entitle the applicant to monopolize the large number of compounds which are covered by these claims. In order to sustain claims to a broad group of compounds, the specification must illustrate with reasonable certainty that all members of the group are capable of being prepared by the disclosed process of preparation and have the same utility (inhibiting premature vulcanization) upon which their patentability is based. Certainly broad product claims must be adequately supported by a sufficient number of examples. A specific product or species, which is not specifically described and exemplified in the specification, may not be claimed. Product claims 9 and 16 must be restricted in scope to that which is adequately supported by the disclosure.

From this it is clear that due consideration must be given to what persons skilled in the art would take from a disclosure. We use the word “persons” in the plural advisedly. Experts have been known to reach divergent conclusions. The reports of patent cases are replete with such conflicts, and it may well be imprudent to lean too heavily upon the opinions of any one, or even of several “skilled persons”. It is necessary to assess what would be the views of skilled persons “generally”. Where there was just such a conflict of opinion among experts (Travers Investment v. Union Carbide, [1965] 2 Ex. C.R. 126, at p. 143), Mr. Justice Gibson stated:

The experts can only weigh the probabilities based on their training and experience and make their best educated guesses, but the Court is left with the usual legal standard of proof, namely, more probable than not, or as it is sometimes put, the preponderance of believable evidence.

We come to the conclusion that the disclosure provides sufficient direction so that a skilled chemist could prepare the compounds using methods previously known in the art. We also recognize that the disclosure has mentioned all the compounds covered by claim 16. …

The refusal is justified on the ground alone that the disclosure in the appellant’s application is not sufficient to support the claim to such a broad range of new compounds. We would refer to the reasoning of Jackett, C.J. in the case of Leithiser v. Pengo Hydra-Pull of Canada Ltd., 17 C.P.R. (2d) 110 to the effect that full and explicit compliance with section 36(1) of the Patent Act requires a specification that tells all the world what the invention is and how to make use of it and also describes how to produce the product for which an invention is claimed. Claim 9 covers a vast number of compounds. Claim 16 claims, as the product of Claim 9, some 126 different specific compounds. The specifications provide details in respect of only three of these specific compounds. A perusal of these details makes it clear that detailed and specific instructions (different in

a number of particulars in each case) are necessary in order for a skilled chemist to be able to make use of the invention. Such detailed and specific instructions are not contained in the specifications except for the three specific compounds referred to above.

… The specification in effect fully describes not only the invention, as the learned trial judge found, but also its operation or use. Although, in terms, the various steps are described only for the chloro-ethane process, in fact the same steps are involved when using the bromo-ethane starting material and any person skilled in the art knows that this is what should be expected in the absence of any mention of an anomaly in the behaviour of the bromo-ethane compound. It does not appear to me that a patent should be invalidated on account of such a technicality and I do not think that s. 36(1) so requires. A specification is addressed to persons skilled in the art and, therefore, is to be construed by the

standard of what such a person would understand on reading it….

… The Board is left, however, with a more difficult problem, one of assessing whether the rejected claims are too broad in the sense that they cover more than the invention made. We are concerned about such issues as “speculative claiming”, and “paper inventions”. Section 36 is satisfied in that the applicant has fully described something, but is it his invention which he has described? What we must now determine is whether the applicant completed the invention in sufficient detail that it can be fairly said that he invented all the compounds of the two claims.

The objection that a claim is too broad because it covers unknown and unchartered areas where the applicability of the invention is unpredictable, and further inventive experiments would be needed, arises most frequently in the chemical arts, because as has been recognized “There is no prevision in chemistry” (Chipman Chemicals v. Fairview Chemical, [1932] Ex. C.R. 107, at 115). While that may be an overstatement, nevertheless it indicates the special caution to be exercised when extrapolating in the chemical arts. Since claims are defective if they are speculative, there are important limitations upon an inventor’s right to claim a generalization from his disclosure.

Where, then, is the line to be drawn between a claim which goes beyond the consideration and one which equiparates with it? In my judgment this line was drawn properly by Sir Lionel when he very helpfully stated in the words quoted above that it depended upon whether it was possible to make a sound prediction. If it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so.

Normally in chemical reactions, and presumably also in physical interactions, it is the functional, as it is called, or characteristic groups which are of importance…

(1) The construction of the claim is the first consideration, and if, as here, the claim is for a large class of chemical bodies as such, then it is on this basis that the consideration must first be tested. If it is shown that some bodies falling within such claim have no utility, then, apart possibly from a de minimis case where there are only a few exceptions, such as Maugham, J., had in mind in the case of I.G. Farbenindustrie A.G.’s Patents (1930), 47 R.P.C. 289 at 323, line 14, the claim is bad…

(2) From the point of view of the public and patentees it is desirable that research in the drug or other

fields, as the case may be, should continue. In the drug field in particular research in very expensive and the number of “winners” found is only a minute proportion of those synthesized and tested. Once a winner is found, however, it is very common also to find that bodies more or less closely related to it have the same or even greater activity. Here, for example, trifluoperazine is some five times more active than chlorpromazine, and fluphenazine some twenty times more active than chlorpromazine. All are phenothiazine derivatives, all substituted in the “2” position, trifluoperazine and fluphenazine having the new -CF3 substitution rather than the -Cl substitution of chlorpromazine, and therefore falling within claim 1. … Unless, therefore, the original inventor of the -CF3 substitution can properly be given reasonably broad cover, it is likely that soon after others hear of his success similar bodies will be made by others having as good or better activity. Unless he can control such activities, any reward he may obtain for his invention and research is likely to be of little value.

Where, then, is the line to be drawn between a claim which goes beyond the consideration and one which equiparates with it? In my judgment this line was drawn properly by Sir Lionel when he very helpfully stated in the words quoted above that it depended upon whether or not it was possible to make a sound prediction. If it is

possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so. Of course, in so doing he takes the risk that a defendant may be able to show that his prediction is unsound or that some bodies falling within the words he has used have no utility or are old or obvious or that some promise he has made in his specification is false in a material respect; but if, when attacked, he survives this risk successfully, then his claim does not go beyond the consideration given by his disclosure, his claim is fairly based on such disclosure in these respects, and is valid.

… In our view an applicant should be able to put forward a claim in generic terms to a group of like substances, all of which need not have been prepared or tested, where it would be reasonably able and sound to make a prediction about the area covered. In some instances that area may be quite broad, in others extremely narrow, depending in large part upon the state of the prior art, in part upon the nature of the invention, and in part upon the extent to which the applicant himself has explored that area. Further, where such exploration is needed, he should have explored the

area before he has filed his application for patent. Otherwise the invention was speculative when filed, and only completed subsequently.

In applying that principle to the application before us, we have no hesitation in recommending that the refusal of claim 9 in its present form be affirmed. It is extremely broad, covers a vast number of compounds, and we think it goes beyond the area of reasonable prediction. The compounds covered by it are all new, and we are not satisfied that there specific examples are adequate support for the breadth of the claim___

Claim 16 is too broad for different reasons. By listing in it specific compounds the applicant purports to have invented those specific compounds. The evidence is that he had prepared and described in any detail only three of them. It is in fact a claim to something which had not yet been invented. Given time a chemist or anyone versed in chemical nomenclature could name all compounds coming within the scope of any broad genus. Such “graphite on cellulose” or theoretical inventioneering on paper does not, in our view, warrant a patent, and for that reason we recommend that it be rejected. Only by restriction to the three compounds actually prepared should that claim be considered allowable.

44. Every person who has failed to obtain a patent by reason of a refusal or objection of the Commissioner to grant it may, at any time within six months after notice as provided for in sections 42 and 43 has been mailed, appeal from the decision of the Commissioner to the Federal Court and that Court has exclusive jurisdiction to hear and determine such appeal.

42. Whenever the Commissioner is satisfied that the applicant is not by law entitled to be granted a patent he shall refuse the application and, by registered letter addressed to the applicant or his registered agent, notify the applicant of such refusal and of the ground or reason therefor.

No doubt the Commissioner of Patents ought not to refuse an application for a patent unless it is clearly without substantial foundation….

It is therefore clear that the valuation made by the Board of revision rested solely on the assessment by its members of the various relevant factors, without any mathematical basis of calculation. It is true that the Charter of the City of Montreal does not expressly oblige the Board of revision to give such information, but ss. 873 and 874 of the Charter provide for a right of appeal to the Provincial Court, which must decide on the record compiled before the Board of revision without further evidence…

… the decision of the Board or revision does not indicate how the value set was arrived at from the

information provided in the evidence. Its valuation cannot therefore stand up against figures arrived at mathematically on proven bases, and by the only precise method submitted to the Court___

it is not possible for the reviewing tribunal in the circumstances in this proceeding to ascertain from the Board order whether the Board acted within or outside the ambit of its statutory authority. The form and content of the Board’s order are so narrow in scope and of such extraordinary brevity that one is left without guidance as to the basis upon which the rates have been established for the period October 1, 1975 onwards. Hence this further submission … must fail.

I have weighed the findings of the Patent Appeal Board and concur with its recommendations. If the applicant contemplates appealing this determination, he must commence such action within six months of this date (vide the Patent Act, Section 44).

The judgment of Martland and Dickson JJ. was delivered by

These product claims are much too broad in view of the disclosure which only discloses the preparation of three of the compounds being claimed.

Product claim 16 is directed to 126 species altogether; they are just recited from the disclosure. As previously mentioned only the preparation of three of these species is exemplified and have a physical constant (melting point) and elemental analyses (for two species only). There is no way of proving that all these species have been prepared for there are no methods of preparation, physical constants and/or elemental analyses results given. Claims must be adequately supported by the disclosure (Rule 25 under the Patent Act) and when 126 species are being claimed in the broad product claim, the specific disclosure of the preparation of three species only is insufficient. The invention claimed is far from being fully described and hence this is contrary to Rule 25 under the Patent Act. The exemplification of three compounds is certainly not sufficient to support the vast expanse of subject matter covered by these claims and does not entitle the applicant to monopolize the large number of compounds which are covered by these claims. In order to sustain claims to a broad group of compounds, the specification must illustrate with reasonable certainty that all members of the group are capable of being prepared by the disclosed process of preparation and have the same utility (inhibiting premature vulcanization) upon which their patentability is based. Certainly broad product claims must be adequately supported by a sufficient number of examples. A specific product or species, which is not specifically described and exemplified in the specification, may not be claimed. Product claims 9 and 16 must be restricted in scope to that which is adequately supported by the disclosure.

In the final rejection two sets of claims (1-8 and 9 & 16) were refused, but the examiner subsequently withdrew his objections to claims 1-8. Consequently the Board need consider only the refusal of claims 9 & 16. The reasons for their rejection were quite unrelated to the objections that had been made to claims 1-8, and there is no necessity for reviewing either the reasons for refusal of claims 1-8, or why those objections were subsequently withdrawn.

Claims 9 and 16 were rejected under Section 36 of the Patent Act and Rule 25 on the grounds that they are too broad, covering subject matter going beyond what was invented. In them the applicant has claimed certain chemical compounds to be used as rubber vulcanization agents. The record indicates that the applicant actually prepared only three of these compounds before the application was filed (others were prepared later), but his claims cover many compounds, and specifically recite 126 species. What the Board must determine is whether the applicant is entitled to claim the invention in such broad scope.

To the jurisprudence relied upon by the applicant we add the recent findings of the Supreme Court of Canada in Burton Parsons Chemicals v. Hewlett-Packard, [1976] 1 S.C.R. 555. In considering whether the claims of Burton Parsons were broader than the invention, Mr. Justice Pigeon stressed that:

While the construction of a patent is for the Court, like that of any other legal document, it is however to be done on the basis that the addressee is a man skilled in the art, and the knowledge such a man is expected to possess is to be taken into consideration (p. 563).

and further

The evidence makes it clear that this was obvious to any person skilled in the art because the characteristics of suitable emulsions and of suitable salts were well known (p. 564).

From this it is clear that due consideration must be given to what persons skilled in the art would take from a disclosure. We use the word “persons” in the plural advisedly. Experts have been known to reach divergent conclusions. The reports of patent cases are replete with such conflicts, and it may well be imprudent to lean too heavily upon the opinions of any one, or even of several “skilled persons”. It is necessary to assess what would be the views of skilled persons “generally”. Where there was just such a conflict of opinion among experts (Travers Investment v. Union Carbide, [1965] 2 Ex. C.R. 126 at 143), Mr. Justice Gibson stated:

The experts can only weigh the probabilities based on their training and experience and make their best educated guesses, but the Court is left with the usual legal standard of proof, namely, more probable than not, or as it is sometimes put, the preponderance of believable evidence.

We come to the conclusion that the disclosure provides sufficient direction so that a skilled chemist could prepare the compounds using methods previously known in the art. We also recognize that the disclosure has mentioned all the compounds covered by claim 16. The Board is left, however, with a more difficult problem, one of assessing whether the rejected claims are too broad in the sense that they cover more than the invention made. We are concerned about such issues as “speculative claiming”, and “paper inventions”. Section 36 is satisfied in that the applicant has fully described something, but is it his invention which he has described? What we must now determine is whether the applicant completed the invention in sufficient detail that it can be fairly said that he invented all the compounds of the two claims.

The objection that a claim is too broad because it covers unknown and unchartered areas where the applicability of the invention is unpredictable, and further inventive experiments would be needed, arises most frequently in the chemical arts, because as has been recognized “There is no prevision in chemistry” (Chipman Chemicals v. Fairview Chemical, [1932] Ex. C.R. 107 at 115). While that may be an overstatement, nevertheless it indicates the special caution to be exercised when extrapolating in the chemical arts. Since claims are defective if they are speculative, there are important limitations upon an inventor’s right to claim a generalization from his disclosure. We now turn to the jurisprudence which examines such issues.

In Hoechst v. Gilbert, [1966] S.C.R. 189, a chemical case where certain drugs were claimed, the Supreme Court of Canada has come out (at p. 194) against overclaiming in these terms:

In challenging the validity of the patents in question, counsel for the respondents put his case upon the footing that no one could obtain a valid patent for an unproved and untested hypothesis in an unchartered field. That is what the appellant has tried to do in claim 1 of each of the patents. It has sought to cover, in the words of Thurlow J., “every mathematically conceivable sulphonyl area of the class” and has consequently overclaimed, and, in so doing, invalidated claim 1 in each patent.

The point has also been considered in Rhône-Poulenc v. Gilbert, [1968] S.C.R. 950 at 953.

In Steel Co. of Canada v. Sivaco Wire and Nail, 11 C.P.R. (2d) 153 at 195, we find the term “mere paper suggestions” applied to patents for inventions which have not been developed.

In B.V.D. Canadian Celanese, [1936] Ex. C.R. 139 at 148 it was stated that before a prior patent may be relied upon to anticipate a later patent “It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own. And an improvement, claimed to be invention, must not be dismissed as unpatentable merely because of some vague adumbration of it in the prior art”. It seems to us that a corollary of that, which should be equally valid, is that a prior patentee should not be entitled to claim an invention which he may have outlined or foreshadowed without bringing it into being. The Supreme Court ([1936] S.C.R. 221 at 237), found the B.V.D. patent invalid because: “The claims in fact go far beyond the invention”.

In Boehringer Sohn v. Bell Craig, [1962] Ex. C.R. 201 we find:

… a patent purporting to give an exclusive property in more than the inventor has invented is also contrary to what the statute authorizes …(p. 239).

and

… a patent which includes in its specification a claim which claims more than the inventor has invented purports to grant an exclusive property in more than the inventor has invented and at least in so far as that

claim is concerned the patent, in my opinion, is not granted under the authority of the statute and is therefore not lawfully obtained …. a claim which is invalid because it claims more than the inventor invented is an outlaw and its existence as defining the grant of a property right is not to be recognized as having any validity or effect (p. 241).

Mr. Justice Thurlow found that the claim in suit to be too broad because it covered a large number of substances of which only a limited number has been prepared. The Supreme Court ([1963] S.C.R. 410 at 412) supported his findings. The Boehringer Sohn case did involve, of course, pharmacological substances whose properties may be even less predictable than other chemical substances, and the group of compounds claimed was extremely large. Similar conclusions in comparable circumstances were reached in Hoechst v. Gilbert, [1964] 1, Ex. C.R. 710 and [1966] S.C.R. 189, in which case there was evidence that some 700 members of the class had been synthesized, and in Re May and Baker (1948), 65 R.P.C. 255, (1949), 66 R.P.C. 8 and (1950), 67 R.P.C. 23. The Supreme Court, in the Hoechst decision, adopted the view that “no one could obtain a valid patent for an unproved and untested hypothesis in an unchartered field”. The dangers of overclaiming were also explored in Société Rhône-Poulenc v. Ciba (1967), 35 F.P.C. 174 at 201-205 and [1968] S.C.R. 950 in which a broad claim was found invalid because the majority of the substances of the class had never been made or tested by anyone.

The applicant also referred to the decision of the Supreme Court in the Burton Parsons case, mentioned above in those portions of this decision prepared before delivery of his latest submission. An extension of the findings in Burton Parsons to this case must be treated with caution. It dealt with compositions made up of known compounds, whereas here we are concerned with completely new compounds previously unknown for any purpose whatsoever. The invention in Burton Parsons involved selecting known salts with known properties and incorporating them into an electrocardiographic cream. It is much easier to predict how known compounds will react when their properties are already recognized. We refer to p. 105 of the decision:

The evidence makes it clear that this (the salts to be used) was obvious to any person skilled in the art because the characteristics of suitable emulsions and of suitable salts were well known. Only the combination was new (underlining added).

Where, then, is the line to be drawn between a claim which goes beyond the consideration and one which equiparates with it? In my judgment this line was drawn properly by Sir Lionel when he very helpfully stated in the words quoted above that it depended upon whether or not it was possible to make a sound prediction. If it is possible for the patentee to make a sound prediction and to frame a claim which does not go beyond the limits within which the prediction remains sound, then he is entitled to do so.

This last paragraph puts succinctly what we have been able to distil from the jurisprudence discussed above. In our view an applicant should be able to put forward a claim in generic terms to a group of like substances, all of which need not have been prepared or tested, where it would be reasonably able and sound to make a prediction about the area covered. In some instances that area may be quite broad, in others extremely narrow, depending in large part upon the state of the prior art, in part upon the nature of the invention, and in part upon the extent to which the applicant himself has explored that area. Further, where such exploration is needed, he should have explored the area before he has filed his application for patent. Otherwise the invention was speculative when filed, and only completed subsequently.

In applying that principle to the application before us, we have no hesitation in recommending that the refusal of claim 9 in its present form be affirmed. It is extremely broad, covers a vast number of compounds, and we think it goes beyond the area of reasonable prediction. The compounds covered by it are all new, and we are not satisfied that three specific examples are adequate support for the breadth of the claim. The nature of the imido radical, R1, requires considerably more restriction and definition. It should be limited by structure to the particular class of imido radicals disclosed, and which it might be reasonably supposed from the disclosure gener-

ate the properties which make the compounds useful as vulcanization inhibitors. What we have in mind is something more comparable to the scope of the claims issued in corresponding U.S. Patent 3775428.

Claim 16 is too broad for different reasons. By listing in it specific compounds the applicant purports to have invented those specific compounds. The evidence is that he had prepared and described in any detail only three of them. It is in fact a claim to something which had not yet been invented. Given time a chemist or anyone versed in chemical nomenclature could name all compounds coming within the scope of any broad genus. Such “graphite on cellulose” or theoretical inventioneering on paper does not, in our view, warrant a patent, and for that reason we recommend that it be rejected. Only by restriction to the three compounds actually prepared should that claim be considered allowable.

We are all of the opinion that the Commissioner of Patents did not err in affirming the refusal of a patent in respect of Claims 9 and 16 in the appellant’s application. The refusal is justified on the ground alone that the disclosure in the appellant’s application is not sufficient to support the claim to such a broad range of new compounds. We would refer to the reasoning of Jackett, C.J. in the case ot Leithiser v. Pengo Hydra-Pull of Canada Ltd. 17 C.P.R. (2d) 110 to the effect that full and explicit compliance with section 36(1) of the Patent Act requires a specification that tells all the world what the invention is and how to make use of it and also describes how to produce the product for which an invention is claimed. Claim 9 covers a vast number of compounds. Claim 16 claims, as the product of Claim 9, some 126 different specific compounds. The specifications provide details in respect of only three of these specific compounds. A perusal of these details makes it clear that detailed and specific instructions (different in a number of particulars in each case) are necessary in order for a skilled chemist to be able to make use of the invention. Such detailed and specific instructions are not contained in the specifications except for the three specific compounds referred to above.

Further, the Commissioner was entitled to weigh the expert opinion as to whether there could be a sound or reasonable prediction that all the compounds would possess utility and to arrive at a contrary judgment or opinion on the basis of the finding and recommendation of his own advisors acting as the Patent Appeal Board.

What the Board must determine is whether the applicant is entitled to claim the invention in such broad scope.

The refusal is justified on the ground alone that the disclosure in the appellant’s application is not sufficient

to support the claim to such a broad range of new compounds.