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In re Howarth, 654 F.2d 103, 210 U.S.P.Q. 689

Facts

The patent applicant appealed a decision from the Patent and Trademark Office Board of Appeals, which upheld the rejection of all claims in application Serial No. 620,564. The application involved various derivatives of clavulanic acid, but the applicant failed to disclose how to make or obtain the starting material, clavulanic acid. Despite the applicant's claims that the preparation was known in the art prior to the U.S. filing date, the court found that the applicant did not provide sufficient information in the specification or incorporate it by reference to an accessible source.

This application involves various derivatives of clavulanic acid. Preparation of the derivatives is disclosed but no method is given for making the starting material, clavulanic acid, per se, nor is a source named.

Issue

Did the applicant provide a sufficient disclosure of how to make or obtain the starting material requisite to the preparation of clavulanic acid?

Did the applicant provide a sufficient disclosure of how to make or obtain the starting material requisite to the preparation of clavulanic acid?

Rule

Analysis

The court analyzed whether the applicant's references to foreign patents and publications constituted sufficient disclosure. It concluded that the applicant did not demonstrate that the information was common knowledge or that the references were publicly accessible in a manner that would enable a skilled person to locate the necessary information. The lack of specific guidance in the application meant that the applicant failed to meet the enabling disclosure requirement.

Conclusion

The court affirmed the rejection of the application, concluding that the applicant did not provide the necessary disclosure to enable others to practice the invention.

We affirm.

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