(concurring).
I reach the conclusion to affirm on the basis only of the following reasoning.
If we analyze patentability in the terms provided for us by Congress, we have to apply the prerequisites of novelty, utility, and unobviousness to the subject matter claimed, which is a process.
Utility can be disposed of because it has not been questioned by the Patent Office, and properly so because one could not very well contend that a process by which a product can successfully be made has no utility.
Novelty we have, not in the sense of manipulative procedures, but only in a selection of known compounds to be reacted. The examiner admits the presence of novelty. So far as manipulation is concerned, all the claims call for is “reacting.” It is not new in chemistry to react two inherently reactive compounds. It has not been shown, however, that the art discloses reacting A with B, to simplify the subject matter of the claimed processes, so we must admit there would be novelty in doing so.
Would it be obvious to react A with B? Here lies the crux of the problem. I agree with the examiner that “applicant obtains exactly what the art teaches will be obtained” and I do not understand that applicant denies it, in the sense of the exact product obtained. But, he says, the art does not suggest reacting A with B — the admittedly known materials reacted by what applicant admits is “a known type reaction procedure.” We are asked, however, to give weight to “the material acted upon and the end result.” The end result I will call AB, the reaction product. I do not know what other result the claimed processes could have.
The “material acted upon” is material A and material B which act upon each other, or react. I have already said there is novelty in their selection. I am unable, however, to find anything unobvious in their selection because that is dictated by the desire to produce AB. While selecting A and selecting B to react with it may not be the only way to produce AB, it cannot be contended that it is not the obvious thing to do if AB is what you want to make.
The “end result” applicant asks us to consider is described by him variously as “the physical attributes of the result,” “the properties of the products produced,” and, in the examiner’s words, “the particular utility or properties of the final chemical compound.” My response to this is that if it be the fact, that the final compound AB possesses-unique, unexpected, surprising, or highly useful properties, they inhere in the product AB, not in A alone, B alone, or in the process of reacting them. While such attributes in a product may make-it, the product, patentable they do not make the process patentable because they are in no way a part of the process. They are attributes of the product alone and' would so remain though it were made by an entirely different process.
If we are asked to jumble up the product and the process and regard it as all the same thing, whether dubbed “the invention as a whole” or given any other-name, and it almost seems that we are, then I say this exhibits a fine disregard *535for the requirement of section 112 that the applicant shall particularly point out and distinctly claim his invention. What this statutory requirement amounts to as the case law has developed it, is that applicant, with distinctness and particularity, shall define in “claims” that part of his disclosed invention which possesses the attributes of patentability under the statute, for until he does, his “claims,” which under well-settled precedents define he scope and content of his patent monopoly, cannot be granted or allowed.
What can be granted in the form of patent claims does not depend, to use words from section 112, on what “the applicant regards as his invention,” but on whether the subject matter he chooses to so regard and define is new, useful, unobvious, and is his invention.
The process claims define, in effect, only the reaction of A with B to produce AB, the reaction admittedly being old except for the selection of A and B from the mass of known materials available. Though they point out novel subject matter, these claims, tested against the prior art, do not define anything unobvious to one of ordinary skill in this art.
This art is chemistry. Were we in a mechanical art, I think no one would trouble to argue that every time a new tool or machine is invented one can obtain process claims directed to nothing more than the obvious steps of selecting the materials, forming the parts on suitable machines, and assembling them in their operative relationship. I can see no distinction in principle here. Yet that is what applicant contends in advancing in his conclusion
“the proposition that, if a product be patentable, a claim to a process for producing such patentable product, is patentable, at least when present in the same application.”
That proposition carries the seeds of its own destruction. It assumes that every patentable product is produced by an nmobvious process.
What I have said is no other than what the examiner said in his holding that
“ * * * the processes claimed herein are new and useful but not inventive.
******
“Patented claims are granted for only one reason and that is because they are inventive; the process claims herein are not inventive.” (My emphasis.)
The difference is that I have said it in the terms laid down by Congress, deliberately used in the statute for the sake of clarity, which I find more conducive to clear thinking than to discuss the patentability of an invention in terms of its being “inventive.” The statute makes no such requirement;1
The reason the invention 2 before us is not patentable under the statute is that it is obvious, notwithstanding its difference from the prior art. 35 U.S.C. § 103.
I therefore agree with the conclusion of the examiner in his Answer, and almost with his mode of stating it, which is:
“It is therefore submitted that the process claims are properly rejected as unpatentable over the art in that they recite no more than the obvious application of old esterification proccesses and that the patentability of a chemical process can not be predicated upon the inventiveness [patentability or unobviousness?] of the product produced thereby.”
*536There is a certain amount of logic in holding a product to be unobvious because of the discovery in it of unobvious properties, such as its ability to act as a nontoxic X-ray contrast agent, because the properties inhere in the product. But I see neither logic nor sound interpretation of the patent law in transferring such properties from the product in which they inhere to a process of making the product in which they do not.
. I am well aware, having participated in the venture, that section 103 was intended to be and is a “codification” of the requirement of “invention” which was developed in the courts and was never, before 1952, in the statute. The term “invention” as denoting a prerequisite to patentability had, however, acquired so many diverse meanings that in drafting section 103 its use was assiduously avoided. I think its avoidance by those attempting to apply the statute in the future will assist materially in carrying out the intent of the legislature.
. “The invention” cannot be anything other than what is claiméd.