COMMISSIONER'S DECISION
Indefinite Claims Referring to Drawings: Antibiotic from streptomyces
Two claims had been refused by the examiner as indefinite because they
referred to an infrared absorption spectrum shown in the drawings. The
office held that since in this case it was difficult to accurately define
the invention without reference to the drawings, the reference would be
permitted.
Final Action: Reversed
*****************
This decision deals with a request for review by the Commissioner of Pat-
ents of the Examiner's Final Action dated December 16, 1975, on application
120,508 (Class 195-104). The application was filed on August 13, 1971,
in the name of Julius Berger, and is entitled "Antibiotic From Strepto-
myces ATCC21386." The Patent Appeal Board conducted a Hearing on May 3,
1978, at which Mr. R. Fuller represented the applicant. Also in attendance
was Mrs. J. Harding, from the same Firm.
The invention relates to a novel antibiotic designated as antibiotic X-5108,
which is produced by a new species of Streptomyces, Streptomyces SP. X-5108.
The antibiotic is active against bacteria and produces growth stimulation
and increased feed efficiency in poultry.
In the Final Action the examiner refused claims 18 and 19 (present claims
9 and 10) because they "are indefinite." These claims refer to a diagram in
the drawings. Other objections made in the Final Action have been overcome
by amendment.
On the point of indefiniteness in the Final Action the examiner stated:
Further, claims 18 and 19 are indefinite. Reference to figures
of the disclosure is not allowable. It has been the policy of this
Office to have spectral data presented in tabular or descriptive
form (see, for example, Canadian Patents 942,217 and 942,696).
In his response, dated June 10, 1976, to the Final Action the applicant has,
inter alia, this to say:
...
In order to overcome the Examiner's objection in respect of
claims 18 and 19 in that reference to figures of the disclosure
are not allowable, applicants have included these figures in
the claims concerned. They have taken this action because to
identify compounds by spectral data identified either in tabular
or descriptive form represents only a poor substitute for
identifying the compound by reference to spectral diagrams. Thus
as has been previously argued by applicants to define a compound
by reference to either an infrared absorption spectrum or a
nuclear magnetic resonance spectrum is the most satisfactory
way of "finger-printing" it. Although applicants have been unable
to find any basis for the Examiner's requirement in either the
Patent Act or Rules that the claims be completely independent
of any document referred to in the disclosure and earlier in the
Rules the disclosure is defined as that part of the specification
other than the claims, which presumably means that it includes the
drawings, nevertheless they have taken the only other step which is
available to them and have included the spectral diagrams in the
claims themselves.
Applicants take issue however with the Examiner's contention that
previous claims 18 and 19 were indefinite as there is no doubt that
they clearly refer on the one hand to Figures 1 and 4 and on the
other to Figures 2 and 3 and there could be no doubt that these were
spectral diagrams clearly identifying the substances concerned.
Consequently it is believed that the Examiner's requirement to present
the spectral data in tabular or descriptive form as in Canadian
Patents 942,217 and 942,696 is unreasonable particularly as this
cannot be said to be the policy of the Office as the Patent Office
have just as frequently accepted reference to drawings in order to
fully identify substances in the same way as has been done in the
present case.
...
The only consideration before the Board is whether present claims 9 and 10
should make reference to the drawings. Claim 9 reads:
A novel antibiotic substance effective in inhibiting the growth of
gram-positive and gram-negative bacteria designated antibiotic
X-5108, which is a yellow amorphous substance characterized as foll-
ows: (a) analysis: carbon, 63.63%; hydrogen, 7.81%; nitrogen,
3.48%; oxygen, 25.08%; (by difference); (b) soluble in methanol,
ethanol, 1- and 2-propanol, tert.butyl alcohol, ethyl acetate,
amyl acetate, butyl acetate and chloroform; (c) a characteristic
infrared absorption spectrum as shown in accompanying attached
Figure 1; (d) a characteristic nuclear magnetic resonance spectrum as
shown in accompanying attached Figure 4; and physiologically acceptable
cationic salts thereof whenever prepared by the process of claim 1,
2 or 3.
Section 36(2) of the Patent Act required that the claim or claims are distinct
and explicit:
The specification shall end with a claim or claims stating
distinctly and in explicit terms the things or combinations
that the applicant regards as new and in which he claims an
exclusive property or privilege.
It is clear then that a claim must be framed in language that is specific and
distinct and admits of no doubt as to its meaning (see B.V.D. Co. Ltd. v
Canadian Celanese Ltd. (1936 Ex. C.R. at 139), so that an addressee of the
patent will, on a fair reading of the claim, be able to determine whether his
proposal will infringe or not. A claim is not, therefore, an added description
of the invention, but a limitation of the description of the invention con-
tained in the body of the specification (see Gillette Safety Razor Co. of Canada
Ltd. v Pal Blade Corpn. Ltd. [1932] Ex. C.R. 132; [1933] S.C.R. 142).
At the Hearing Mr. Fuller argued that in certain circumstances it is permissible
to refer to the drawings, e.g. when it affords a method of "uniquely identifying"
a particular compound. He also argued that it is inconsistent with Section 36(1)
that the applicant be required to provide only part of the story when claiming,
according to the direction of the examiner, the product embodiment of his in-
vention. We tend to agree with the applicant that,under certain circumstances,
defining a compound by reference to its infrared absorption spectrum, nuclear
magnetic resonance spectrum or ultra violet spectrum is more distinct and
explicit than presenting such spectral data in tabular or descriptive form.
We are satisfied that in the present claims it is difficult to accurately define
the product embodiment of the invention in distinct and explicit terms when the
spectral data is presented in tabular or descriptive form only. In our view
reference may be made to the drawings as indicated in claim 9. We hasten to
point out that this does not, under any circumstances, give carte blanche
approval to claim by reference to the drawings. The claims should only refer
to the drawing in a situation where it is most difficult to define the invention
in distinct and explicit terms without reference to the drawings.
We recommend that the decision in the Final Action to refuse claims 9 and 10
(former claims 18 and 19) be withdrawn.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and agree with the recommend-
ation of the Patent Appeal Board. Accordingly, I withdraw the objection
against present claims 9 and 10. The application is returned to the examiner
for resumption of prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 6th. day of June, 1978
Agent for Applicant
Fetherstonhaugh & Co.
Box 2999, Station D
Ottawa, Ont.