Monsanto Company v. Commissioner of Patents, [1979] 2 SCR 1108

Supreme Court of Canada

Monsanto Company v. Commissioner of Patents, [1979] 2 S.C.R. 1108

Date: 1979-06-28

Monsanto Company Appellant;

and

The Commissioner of Patents Respondent.

1979: February 12; 1979: June 28.

Present: Laskin C.J. and Martland, Ritchie, Pigeon, Dickson, Beetz, Estey, Pratte and McIntyre JJ.

ON APPEAL FROM THE FEDERAL COURT OF APPEAL

Patents—Claims rejected as too broad—Untested compounds—Sound prediction claimed—Patent Appeal Board—No reason for rejecting expert evidence—Patent Act, R.S.C. 1970, c. P-4, ss. 42, 44.

The Commissioner of Patents refused to grant a patent in respect of two claims for inhibiting premature vulcanization of rubber. The examiner rejected the claims as being too broad in view of the disclosure of the preparation of three only of 126 chemical compounds claimed. A Patent Appeal Board affirmed this rejection and the Commissioner concurred with the Board’s recommendation. On further appeal the Federal Court of Appeal held that the refusal was justified on the ground that the disclosure in the application was not sufficient to support the claim to such a broad range of new compounds and that detailed and specific instructions were not contained in the specification except for three specific compounds. Hence the appeal to this Court.

Held (Martland and Dickson JJ. dissenting): The appeal should be allowed.

Per Laskin C.J. and Ritchie, Pigeon, Beetz, Estey, Pratte and McIntyre JJ.: A patent specification is addressed to a person “skilled in the art” and to such a person the instructions contained in the specification were sufficient for all compounds claimed, as the Board had held. As to the other point, claims such as those in issue may be rejected only if 1) there is evidence of lack of utility in respect of some of the area covered or 2) it is not a sound prediction. The Board did not make any proper finding on that basis and there was no evidence before it on which it could have done so. It was not contended that any of the 126 substances covered did not have utility and the Board did not really make a finding that there was no basis for a sound prediction. It

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failed to say why it was not satisfied that three specific examples were enough. It just stated that it was not satisfied that the evidence submitted was adequate. This is insufficient, because if accepted, it would make the right of appeal conferred by s. 44 of the Patent Act illusory. Under s. 42 of the Act, the Commissioner shall refuse the application only if satisfied that the applicant is not by law entitled to be granted a patent; this is not a matter of discretion. He has to justify any refusal. In the present case the Board’s decision, which he simply adopted, leaves the Court completely in the dark respecting the reasons for which he was not satisfied. It would in the end limit the claims to the area of proved utility instead of allowing them to the extent of predicted utility.

Per Martland and Dickson JJ. dissenting: The Board was fully aware of the legal principles which were applicable in making the determination required of them and properly defined the issues. The Board and the Commissioner made no error in law and reached factual conclusions which they were entitled to make and which were approved by the Court of Appeal. Their conclusions should not be reversed in this Court.

[Burton Parsons Chemicals v. Hewlett-Packard, [1976] 1 S.C.R. 555; Sandoz Patents Ltd. v. Gilcross Ltd., [1974] S.C.R. 1336; Société des usines chimiques Rhône-Poulenc v. Jules R. Gilbert Ltd., [1968] S.C.R. 950; Vanity Fair Silk Mills v. Commissioner of Patents, [1939] S.C.R. 245; Olin Mathieson Corporation v. Biorex Laboratories Ltd., [1970] R.P.C. 157; Pfizer Company Limited v. Deputy Minister of National Revenue, [1977] 1 S.C.R. 456; Canadian Pacific Limited v. City of Montreal, [1978] 2 S.C.R. 719; Northwestern Utilities Limited v. City of Edmonton, [1979] 1 S.C.R. 684; Eli Lilly & Co. v. S & U Chemicals, [1977] 1 S.C.R. 536; R. v. Criminal Injuries Compensation Board, Ex parte Lain, [1967] 2 Q.B. 864, referred to]

APPEAL from a judgment of the Federal Court of Appeal[1] dismissing an appeal from a refusal of the Commissioner of Patents to grant a patent. Appeal allowed, Martland and Dickson JJ. dissenting.

D.F. Sim, Q.C., for the appellant.

T.B. Smith, Q.C., and H. Molot, for the respondent.

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

PIGEON J.—This is an appeal from the judgment of the Federal Court of Appeal summarily dismissing an appeal from the refusal of the Commissioner to grant a patent in respect of two claims. The patent is for what is described in Claim 1 as follows:

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.

The rejected claims, as amended, are in the following terms:

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.

The examiner had originally rejected claims 1 to 8 as well as claims 9 and 16. After an application for review was submitted to the Commissioner, he withdrew his objections to claims 1 to 8. The reason given by the examiner for refusing claims 9 and 16 was put as follows:

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

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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.

On the application for review the matter was considered by a Patent Appeal Board to which evidence was submitted by elaborate affidavits of two employees of the applicant, one of whom described himself as one of the inventors. This board is not a statutory body and it is not provided for in the Rules under the Patent Act. We were informed it is a group of civil servants to whom such matters are referred by the Commissioner. They report to him.

In its report, the Board first considered whether the disclosure provided sufficient directions so that a skilled chemist could prepare the compounds claimed using methods previously known in the art. After reviewing a number of cases including the judgment of this Court in Burton Parsons

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Chemicals v. Hewlett-Packard[2] the Board said:

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. …

I must confess after reading this that I just cannot understand on what basis the Federal Court of Appeal could say in its judgment:

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

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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.

With respect I must say that it appears to me that the Court below has completely overlooked the rule that a patent specification is addressed to a person “skilled in the art”. The Patent Appeal Board had before it elaborate affidavits from persons skilled in the art one of whom described himself as “group leader assigned to special synthesis problems in the field of elastomers”. In this affidavit he explains in detail with reference to authoritative scientific publications that the knowledge and skill possessed by chemists competent in this particular field of endeavour would ensure that the directions contained in the specifications would be adequate to enable them to prepare all the described compounds although specific directions were given for three or less. The Patent Appeal Board was satisfied that such was the case. I fail to see on what basis the learned judges of the Court below could possibly find otherwise. I have no doubt the directions in the specifications are insufficient for them as they are for me but that is not the test. On this first point the situation here is essentially the same as in Sandoz Patents Ltd. v. Gilcross Ltd.[3] where in the judgment of this Court one will find (at pp. 1346-7):

… 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

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

Similar observations were made in Burton Parsons v. Hewlett-Packard, supra, at pp. 559-565, another judgment of this Court dealing with a patent for chemical substances, not with a machine as in Leithiser.

I turn now to the reason for which the Patent Appeal Board came to the conclusion that claim 16 should be rejected. It said immediately after the passage I have previously quoted:

… 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.

After this the Board turned to the jurisprudence on such issues ending with the recent Chancery Division decision in Olin Mathieson Corporation v. Biorex Laboratories Ltd.[4] and quoting from the judgment itself (at p. 193) the following:

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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.

“This last paragraph puts succinctly what we have been able to distil from the jurisprudence discussed above” say the Board. As to this, I should say immediately that I am in full agreement with the decision of Graham J. in Olin Mathieson and find it necessary to consider it more exhaustively. It is a remarkably similar case, dealing with a patent based on the discovery of the utility of a certain radical in a group of complex substances. In the present case, the invention relates to the utility of the imido radical R1 in sulfenimides used us rubber vulcanization agents. In Olin Mathieson the patent covered the substitution of the -CF₃ radical in the place of the -Cl radical in chlorpromazine and a number of other drugs, of which a small number only had been tested. The patent was found valid. Graham J. said (at p. 194):

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…

Dealing with the “conclusions as to prediction”, Graham J. said (at pp. 192-3):

(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

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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.

I fully agree with those observations. As to paragraph 1, the inutility of some of the substances covered by the claim was the reason for which it was found invalid in Société des usines chimiques Rhône-Poulenc. Jules R. Gilbert Ltd.[5] It is important to note that while the substances without utility had not been tested, the true cause of the invalidity was the fact that they were without utility, not that they had not been tested before the patent was applied for. As to paragraph 2, I find it in line with the observations made in the judgment of this Court in Burton Parsons v. Hewlett-Packard, supra, (at pp. 564-5). After a third paragraph which is of no relevance because it deals with compulsory licenses for drug patents, Graham J. said (at p. 193):

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

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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.

I have quoted again the passage quoted by the Board because I consider the last sentence of the paragraph of some importance as it does clearly indicate what is meant by a “sound prediction”. It cannot mean a certainty since it does not exclude all risk that some of the area covered may prove devoid of utility. It thus appears to me that the test formulated by Graham J. involves just two possible reasons for rejecting claims such as those in issue.

1. There is evidence of lack of utility in respect of some of the area covered;

2. It is not a sound prediction.

In my view the Board did not make any proper finding on that basis and there was no evidence before it on which it could have done so.

As to the first question, there is no problem whatsoever. It was not contended that any of the 126 substances covered did not have utility.

As to the second question, it does not appear to me that the Board really found that the claims in issue did not involve a sound prediction. What is said for rejecting the two claims is as follows:

… 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

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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.

It will be noted that with respect to claim 9 all that is said to reject it as not being based on a sound prediction is: “We are not satisfied that three specific examples are adequate support for the breadth of the claim”. On what basis is it so? The Board gives absolutely no indication. If a refusal can be justified on that basis, the right of appeal conferred by s. 44 of the Patent Act is useless in such cases.

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.

Although the report of the Board is quite lengthy, in the end with respect to claim 9 all it says after stating the principle with which I agree, is that a claim has to be restricted to the area of sound prediction and “we are not satisfied that three specific examples are adequate”. As to why

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three is not enough nothing is said. In my view this is to give no reason at all in a matter which is not of speculation but of exact science. We are no longer in the days when the architecture of chemical compounds was a mystery. By means of modern techniques, chemists are now able to map out in detail the exact disposition of every atom in very complex molecules. It, therefore, becomes possible to ascertain, as was done in Olin Mathieson, the exact position of a given radical and also to relate this position to a specific activity. It thus becomes possible to predict the utility of a substance including such radical. As this is a matter of general knowledge among scientists, it will be readily apparent to a competent person that if a patent covers only a few of the substances which yield the desired result, all he has to do is to prepare another which will have the same properties. The report of the Board indicates that it is aware of this. However, it gives no indication of the reasons for which it was not satisfied of the soundness of the prediction of utility for the whole area covered by claim 9. Evidence had been submitted in the form of affidavits based on scientific principles, it does not take issue with those principles, it just says: “We are not satisfied that this is adequate”. In my view this is insufficient because, if accepted, it makes the right of appeal illusory. In this respect it is important to note that s. 42 of the Patent Act reads:

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.

I have underlined by law to stress that this is not a matter of discretion: the Commissioner has to justify any refusal. As Duff C.J. said in Vanity Fair Silk Mills v. Commissioner of Patents[6] (at p. 246):

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

The importance of an adequate statement of the reasons for an administrative decision subject to appeal is underscored by the judgment in Pfizer Company Limited v. Deputy Minister of National Revenue[7]. In that case, the question was as to the meaning of the word “derivative” as applied to antibiotics. The Tariff Board had held that the word was not to be taken in its primary meaning of “a thing obtained from another”, but that it included “a chemical substance that is so related structurally to another substance as to be theoretically derivable from it even when not so obtainable in practice”. To reach this conclusion they had considered a number of publications on the strength of which they had gone so far as to find, contrary to the evidence of competent chemists, that there had been actual derivation. Because the publications relied on were mentioned, it was possible on the appeal to find that the Board had been misled by publications of doubtful authority. In the present case, the Board’s decision leaves the Court completely in the dark respecting the reasons for which they were not satisfied that what the inventors claimed did meet the test for a sound prediction.

In Canadian Pacific Limited v. City of Montreal[8] this Court was unanimous in saying (at pp. 726-7):

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

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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___

In Northwestern Utilities Limited v. City of Edmonton[9], a unanimous judgment of this Court dated October 3, 1978, one reads:

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.

With respect to claim 16 the ultimate conclusion appears to indicate that prediction was completely rejected as a possible basis for that claim. It is hardly necessary to point out how serious it would be in the field of patents for chemical substances to reject practically all possibility of claiming protection on the basis of sound prediction of utility. The Board say that they agree with the views of Graham J. in that respect. However, they appear to me to reach exactly the opposite result. Graham J. found valid the claim based on sound prediction. In the instant case, the Board, in spite of a complete absence of any evidence of unsoundness of the prediction, deny the claims and would in the end limit them to the area of proved utility instead of allowing them to the extent of predicted utility. In my view this is contrary to s. 42 of the Patent Act.

Under that section the Commissioner is instructed to refuse the patent when “satisfied that the applicant is not by law entitled” to it. Here what he has said in approving the decision of the Board is in effect “I am not satisfied you are entitled to it”. In my opinion the Commissioner cannot refuse a patent because the inventor has not fully tested and proved it in all its claimed applications. This is what he has done in this case by refusing to allow claims 9 and 16 unless restricted to what had been

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tested and proved before the application was filed. If the inventors have claimed more than what they have invented and included substances which are devoid of utility, their claims will be open to attack. But in order to succeed, such attack will have to be supported by evidence of lack of utility. At present there is no such evidence and there is no evidence that the prediction of utility for every compound named is not sound and reasonable.

The report of the Patent Appeal Board was incorporated in the decision of the Commissioner, being set forth at length following the formal heading. Its conclusion was: “For the reasons given we recommend that the rejection of claims 9 and 16 in their present form be affirmed”. Then, the Commissioner wrote above his signature:

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).

Thus it is clear that the Patent Appeal Board report is part of the Commissioner’s decision and the problem with which the Court was faced concerning some unsigned marginal comments in Eli Lilly & Co. v. S & U Chemicals[10] does not arise. It is equally clear that the Patent Appeal Board was only reporting with a recommendation to the Commissioner who alone made the decision. It was not making the decision like the board referred to in Reg. v. Criminal Injuries Compensation Board, Ex parte Lain[11]. In the scheme promulgated under prerogative powers whereby that board was established, it was provided: “The board will be entirely responsible for deciding what compensation should be paid in individual cases and their decisions will not be subject to appeal or to ministerial review…”

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I would allow the appeal with costs in this Court and in the Court of Appeal, reverse the judgment of the Federal Court of Appeal, allow the appeal from the decision of the Commissioner of Patents and direct him to issue to the appellant on its application serial number: 095,945 a patent including claims 9 and 16.

The judgment of Martland and Dickson JJ. was delivered by

MARTLAND J. (dissenting)—This is an appeal from a judgment of the Federal Court of Appeal which dismissed an appeal by the appellant from the respondent’s refusal to grant a patent in respect of Claims 9 and 16 contained in the appellant’s application for a patent.

The application was for letters patent for an invention made by Aubert Yaucher Coran and Joseph Edward Kerwood entitled “Inhibiting Premature Vulcanization of Diene Rubbers”. The invention relates to new chemical substances useful in the production of vulcanized rubber as inhibitors of premature vulcanization of diene rubbers.

The specification of the application disclosed that the inventors had discovered a class of chemical compounds (specifically sulfenimides) having these valuable properties, gave the common formula for the nucleus of the substances and described various radicals which could be used in the class. The specification described the preparation of the new compounds generally by formula and described the preparation of three representative compounds falling within the scope of the invention. The claims were amended from time to time in light of various objections raised by the Examiner reviewing such amendments to their form but as of April 9, 1974, contained claims 9 and 16 which are the subject of this appeal. Claim 16 is directed to a single genus defined by reference to 126 species and claim 9 covers many more species in its various combinations. Each of the 126 species referred to in claim 16 is specifically referred to in the disclosure of the application.

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On April 9, 1974, the Examiner in the Patent Office refused Claims 9 and 16 for the following reasons:

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.

The appellant applied for a review of the Examiner’s action by the Commissioner. The matter was referred by the Commissioner to a Patent Appeal Board constituted by him, which was required to report to him. There were submitted to the Board affidavits by two employees of the appellant, and a hearing took place at which the appellant was represented.

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The Board submitted to the Commissioner a full report which included the consideration of a number of relevant authorities. It stated the issue to be considered in the following terms:

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.

The Board cited the Examiner’s reasons for refusing Claims 9 and 16, and then reviewed the written submission of the appellant. It considered relevant authorities cited by the appellant. The Board then said:

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).

[Page 1126]

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.

[Page 1127]

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

[Page 1128]

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 Board considered the application of the Burton Parsons decision in this Court, as follows:

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:

[Page 1129]

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).

The Board went on to consider the case of Olin Mathieson Chemical Corporation v. Biorex Laboratories Limited[12], quoting a passage at p. 193:

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.

The Board reached the following conclusion:

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-

[Page 1130]

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.

The Commissioner of Patents concurred with the recommendations of the Board.

The appellant appealed unsuccessfully to the Federal Court of Appeal. The reasons of that Court are as follows:

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.

[Page 1131]

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.

The appellant appealed, with leave, to this Court.

I have set out the reasons and conclusions of the Patent Appeal Board at some length because, in my opinion, they establish that the Board was fully aware of the legal principles which were applicable in making the determination required of them and properly defined the issue. The Board, at the outset, noted the rejection of Claims 9 and 16 by the Examiner on the grounds that they were too broad. The appellant claimed certain chemical compounds to be used as rubber vulcanization agents. The record indicated the preparation of only three of these compounds before the application was filed, but the claims covered many compounds and specifically recited 126 species. The Board then defined the issue:

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

The Board recognized that the disclosure provided sufficient direction to enable a skilled chemist to prepare the compounds using methods previously known in the art, but went on to say that it must determine “whether the applicant completed the invention in sufficient detail so that it can be fairly said that he invented all the compounds of the two claims”.

The Board stated the test which was to be applied in determining the usefulness of all the compounds within the claims. That test was as to whether it was possible for the patentee to make a sound prediction and to frame a claim which did not go beyond the limits within which the prediction remained sound. The Board applied the test and concluded that the vast number of compounds

[Page 1132]

comprised in Claim 9 went beyond the area of reasonable prediction.

This was a conclusion of fact reached by the Board after consideration of the material before it and based upon a proper understanding of the law. So also was the conclusion as to Claim 16 which, said the Board, by listing 126 compounds purports to have invented them. It was a claim to something not yet invented.

The appellant contends that the Board was bound to accept the evidence contained in the affidavits of the experts, in the absence of specific evidence to the contrary. The Board, however, was not in the position of a tribunal determining the rights of contesting parties. There was no lis. The task of the Board, acting on behalf of the Commissioner, was to determine whether the appellant, upon the material submitted by it, was entitled to the invention which was claimed. He and the Board were entitled to consider that material and to use their knowledge and expertise in reaching a conclusion.

The Court of Appeal, in the final paragraph of its judgment, held that the Commissioner was entitled to weigh the expert opinion as to whether there could be 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 advisers acting as the Patent Appeal Board.

There were, therefore, concurrent findings of fact on this issue and I would see no basis for interfering with them on the appeal to this Court.

The appellant, with reference to the first portion of the Court of Appeal judgment, contends that the Court substituted its own judgment based on a reading of the patent, and dismissed the appeal on a finding of fact contrary to the finding of fact by the Board. It is true that in the first paragraph of its reasons it says:

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

[Page 1133]

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

In doing so, the Court appears to be adopting the position taken by the Examiner in his refusal to accept the application for Claims 9 and 16. However, the Court in no way negates the conclusions reached by the Board and the Commissioner, and adopts their reasoning in the final paragraph of the judgment.

I would base my conclusions on the ground that the Board and the Commissioner made no error in law and reached factual conclusions which they were entitled to make and which were approved by the Court of Appeal.

That being so, in my opinion their conclusions should not be reversed in this Court.

I would dismiss the appeal with costs.

Appeal allowed with costs, MARTLAND and DICKSON JJ. dissenting.

Solicitor for the appellant: Donald F. Sim, Toronto.

Solicitor for the respondent: Roger Tassé, Ottawa.