(dissenting).
The Board of Appeals affirmed the examiner’s rejection of the appealed claims on three separate grounds:
(1) the description in the claims was found not to be “adequate to define the compositions as required by 35 U.S.C. 112, nor to so identify them that a determination of obviousness, as related to the prior art, can be made as required in 35 U.S.C. 103”;
(2) the claims were found to be unduly multiplied,1 and
(3) the claims were rejected “as lacking invention over Collip.” 2
*955The majority opinion in affirming the •action of the board, on the first ground, i. e., inadequacy of the claims under 35 U.S.C. § 112, seems to me to have placed an unjustified interpretation on this ground of rejection in order to transform it into a rejection based on the alleged nse of “conveniently functional language at the exact point of novelty,” as this phrase is used in General Electric Co. v. Wabash Appliance Corp. et al., 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402 (1937). After taking this view of the board’s action, the majority does not pass upon grounds 2 and 3 of the board’s opinion.
It is my position that the appealed claims were not properly rejected under 35 U.S.C. § 112 as applied by the examiner and the board; that the claims are “unduly multiplied” only as this rejection is applied to claim 12; and that claims 13-16, inclusive, define an invention which is patentable over Collip.
While the board and the majority predicate their respective rejections of the appealed claims on 35 U.S.C. § 112, they do so, it seems to me, on two entirely different portions of this section.3 The position of the examiner and the board as summarized in the board’s opinion is:
“Claims 12 through 16 are rejected as failing to properly define the alleged invention with the particularity required by 35 U.S.C. 112. It is the examiner’s position that the chemical compound attempted to be defined in the claims is not identified, in a manner ordinarily accepted in the art, with the degree of particularity to which the compound is susceptible. Not only is chemical structure absent but the empirical formula and the amino acid components which make up the protein-like product have not been set forth.
****** “While 35 U.S.C. 112 requires a product to be defined in terms clear and concise enough to enable one skilled in the art to determine what falls under the claims and what does not, as argued by appellant in page 22 of his main brief, the definition of said product must also be sufficient so that the differences between it and prior art compounds can be determined, in order that a decision may be made as required by 85 U.S. C. 108 as to whether or not the claimed product is obvious from the teachings of the prior art.” [Emphasis added.]
In my opinion, both the above quoted portions of the board’s opinion, while referring in terms to the claims as required by the second paragraph of 35 U.S.C. § 112, actually are dealing with the type of definition of the claimed product, rather than with the use of “functional language” in the claims. As I view the rejection under 35 U.S.C. § 112, it raises an issue under the first paragraph of section 112, namely, is the invention defined “in such full, clear, concise and exact terms as to enable any person skilled in the art * * * to make and use the same * *
It has been recognized by those skilled in the chemical arts that a chemical substance may be defined—
(a) by a structure formula (or official nomenclature)
(b) by a product by process claim, and
*956(c) by chemical or physical properties (fingerprinting) 4
The examiner and the board here arbitrarily require, as a condition for pat-entability of a chemical composition, the use of a structural formula or “product by process” claims. The examiner and the board, by here insisting on one or the other of these types of definition, have excluded the recognized third type, that of defining the invention by its chemical or physical properties, i. e., its “fingerprints.” At no place in either the examiner’s answer or in the board’s opinion, do I find any rejection of the claims as being “functional at the point of novelty.”
The language of 35 U.S.C. § 112 is properly broad enough to leave much to the discretion of an applicant for patent as to how the invention is to be disclosed and claimed. The standard fixed by 35 U.S.C. § 112 is the general standard that the terms used must be so “full, clear, concise and exact” that the invention is disclosed to one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, so that such person may “make and use the same.” While it is understandable that administrative problems in the Patent Office would be lessened if all applicants were forced to disclose and claim their chemical inventions either by structural formulas or in “product by process” terms, I think it is beyond the authority of the Patent Office, or of this court, to require more of an applicant than Congress required under the general terms of 35 U. S.C. § 112. I would, therefore, test the language of the rejected claims against the provisions of 35 U.S.C. § 112 and in the absence here of any showing that the terms are not so “full, clear, concise and exact” as to enable one of ordinary skill in the pharmaceutical or the related chemical arts to make and use the invention, I would find the nomenclature of the claims adequate under 35 U.S.C. § 112.
In applying the statutory test of section 112 to the claims on appeal, claim 13 for example states that the concentrate contamination must be “as low as 0.08 unit of vasopressin activity per International unit of adrenocorticotrophin potency” and “at least as low as 0.05 unit of oxytocin activity” per International unit of potency. The units of vasopres-sin and oxytocic activity are set forth in appellant’s specifications as follows:
“The vasopressin activity of my adrenocorticotrophie hormone product is determined according to the method recognized by the United States Pharmacopeia as compared with the standard preparation established thereby. The oxytocin activity of this product is determined by the uterine strip method which is also recognized by the United States Pharmacopeia. Another method which is suitably correlated with that of the United States Pharmacopeia analysis is the procedure of Coon as modified by R. E. Thompson, involving the analysis of rooster blood pressure.”
The International unit of potency is also disclosed in the specification as follows:
“* * * The generally accepted standard is that which has been adopted by The Technical Advisory Committee to the Study Section for Metabolism and Endocrinology of the National Institutes of Health. This standard is approximately that of a physically-chemically pure hormone extracted from the pituitary glands and described by Sayers, Sayers and Woodbury in Endocrinology, Volume 42, No. 5, May, 1948, page 385. More recently the above-mentioned standard has been adopted as ‘International Standard’. One milligram of the standard (also referred to as ‘LAIA’) equals one International unit.”
*957At no time during the prosecution of appellant’s application in the Patent Office did the examiner or the board raise any question whether the standards of measurement set forth in the above excerpts from appellant’s specification would be understood or comprehended by a person of ordinary skills in the pharmaceutical or related chemical arts. It seems to me that the limitations contained in claim 13 are as “full, clear, concise and exact” a description of the chemical or physical properties of appellant’s concentrate as is required by 35 U.S.C. § 112. I do not consider, as the majority appears to do, that the recitals of the amount of vasopressin and oxyto-cin activity as a measure of the posterior pituitary contamination of the claimed concentrate constitues the use of “conveniently functional language at the exact point of novelty.” They are recognized measurements, not unlike measurements of concentration, acidity, alkalinity, specific gravity, and a host of other physical and chemical properties which are accepted as recognized parameters of a particular chemical compound or concentrate. In all these fields, the measurement is made in terms derived experimentally from the function of the compound or concentrate in the particular test or experiment by which a given property of the compound or concentrate may be measured. This fact, it seems to me, distinguishes these claims from the claims before the court in the General Electric Co. v. Wabash Appliance Corp. et al. case, supra. There the claim was to a tungsten lamp filament which was asserted to have non-sagging properties. This function of the filament was attributed to the large grain sizes of the tungsten from which the filament was made. The novelty in the invention claimed resided in the use of these large grain sizes of the tungsten particles in forming the filament. No recognized parameters were stated for these sizes nor was “sagging” defined, thus leaving solely to experimentation the determination of whether or not a given filament might constitute an infringement.5 This aspect of the case rests upon the earlier decision in Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 48 S.Ct. 474, 72 L.Ed. 868 (1927). It was also the subject of further comment and elaboration in United Carbon Co. et al. v. Binney & Smith Co., 317 U.S. 228, 63 S.Ct. 165, 87 L.Ed. 232 (1942), in which the Supreme Court emphasizes the fact that “in a limited field the variant must be clearly defined.” (317 U.S. at 232, 63 S.Ct. at 167).
Here, it seems to me, the applicant has properly defined the “variant” over the prior art, i. e., the control of the posterior pituitary contamination within the limits of at least as low as 0.08 unit of vasopressin activity and at least as low as 0.05 unit of oxytocin activity, both per International unit of adrenoeortico-trophin potency. I would, therefore, reverse the rejection of the claims under 35 U.S.C. § 112.
I pass now to the second ground of rejection, multiplicity of the claims. The board’s opinion states this ground of rejection as follows:
“Claims 12 through 16 are also rejected as being unduly multiplied on the ground that five claims are not seen to be proper as based upon the disclosure of one single product.
“We have considered appellant’s arguments but agree with the examiner’s position since the claims, in our opinion, are not drawn to varying scope of compositions, but are directed to the same product defined in terms of more or less descriptive properties. Any claim having less than the maximum number of descriptive parameters is incomplete, and we do not consider it proper to vary the scope of intended' coverage of a patent claim merely by varying the number of descriptive relationships set forth. No more than one claim is required to describe a single compound and that *958claim should include all of the necessary descriptive properties. The examiner’s rejection, therefore, is sustained as to all but one of the rejected claims.”
While not too aptly stated, I believe the underlying basis of this ground of rejection is that the disclosure does not support all five appealed claims. On the assumption that this is a correct understanding of this ground of rejection, I would afiirm it and limit applicant to claims which are commensurate with the disclosure in his specification. Appellant attempts to justify the use of multiple claims on the basis of the statement in the specification that:
“Preferably, my adrenocortico-trophic hormone product has a posterior pituitary contamination at least as low as 0.08 unit of vaseo-pressin activity per International unit of adrenocorticotrophin potency. Further, it is preferred that this product have an oxytocin contamination at least as low as 0.05 unit per International unit of adren-ocorticotrophin potency.”
I am unwilling to give this statement in the specification the broad effect urged by appellant. The invention disclosed in the specification is an adrenoeortico-trophic hormone concentrate in which “undesirable factors, such as posterior pituitary hormones” have been effectively eliminated while at the same time the potency of the active substance obtained is increased. The specification states that:
“In the extraction of animal pituitary glands, it is found that the extract contains, in addition to the adrenoeorticotrophic hormones, certain undesirable factors which are tolerated only in very limited amounts by the human being. Principal among these are the posterior pituitary hormones which are generally referred to as ‘posterior pituitary factors’ or ‘contaminants’. These are protinaceous material and consist mainly of oxytocic and vaso-pressor principles. Other anterior pituitary hormones are also found in the extract.
“The posterior pituitary factors containing oxytocic and vasopressor activity, if present in the injected adrenoeorticotrophic extract, have an adverse effect upon the abdominal muscles, giving the patient cramps, causing an increase in the blood pressure and a change in the amount of urine secreted, and creating also a serious metabolic unbalance in the system.”
It seems to me, therefore, that one of the parameters of appellant’s new compound as disclosed is that it is substantially free from the posterior pituitary factors containing oxytocic and vasopres-sin activity. Appellant in his specification has not differentiated between the two activities insofar as their adverse physiological results are concerned. For this reason I do not think appealed claim 12 completely sets forth the disclosed invention. I would therefore affirm this rejection of claim 12.
Claim 13 which recites the parameter of being “substantially free of posterior pituitary factors” in terms of both its vasopressin and oxytocic activity seems to me to be commensurate in scope with the disclosure in the specification. Claim 14 in addition contains a minimum pH limitation and states that the concentrate is “dialyzable at a pH below 4.0.” Claim 15, dependent on claim 14, requires a potency twice that of claims 13 and 14. Claim 16 requires the increased potency of claim 15 but does not include the limitation that the concentrate be “dialy-zable at pH below 4.0.” These variants in scope are supported by appellant’s specification and are, in my opinion, such variables as an applicant is entitled to cover in separate claims. See In re Wood and Turner, 155 F.2d 547, 33 C.C.P.A. 984.
The third and remaining ground of rejection is that the appealed claims are “lacking in invention over Collip.” Normally I would construe this as a rejection for obviousness under 35 U.S.C. § 103. Here, however, I find an inherent incon*959sistency in the board’s opinion. The board in sustaining the examiner’s rejection of the claims under 35 U.S.C. § 112 said:
“The examiner’s rejection, therefore, will be sustained since we do not find the description in the claims adequate to define the compositions as required by 35 U.S.C. 112, nor to so identify them that a determination of obviousness, as related to the prior art, can be made as required in 35 U.S.C. 103.”
Despite this unequivocal holding, the board, after reconstruction of the Collip reference, states:
“After a careful study of appellant’s briefs and of the arguments and decisions cited therein, we do not consider the examiner’s rejection to have been overcome. The decisions cited by appellant, including the Merck & Co., Inc. v. Olin Mathieson Chemical Corp., supra, decision, apparently relate to purified existing products, but the composition herein at issue differs from previously existing products by being a chemical reaction product thereof wherein the structure of the molecule is apparently altered by an acid hydrolysis at a pH below 2.5 and a temperature above 50°C. The derivative thus produced is not, in our opinion, merely a purified prior art product but is a chemically altered one, and the rejection herein is now restricted to a reference alleged to teach the described chemical alteration. The rejection, therefore, is not based upon ‘ “a scientific ivory-tower curiosity”, [sic] ACTH’ but upon the composition inherently produced in Collip under his described conditions of acid hydrolysis.”
My study of the Collip reference fails to reveal any teaching by Collip of an adrenocorticotrophic hormone concentrate in which the posterior pituitary contamination, measured in terms of its vasopressin and oxytocin activity, falls within the limits specified in the rejected claims. Even when given the benefit of the board’s reconstruction, Collip, at best, would produce such a concentrate only as an accidental, unexpected and wholly unappreciated result of his tests which he discloses are for the purpose of determining the heat stability of the adrenotropie principle being tested. If I were in doubt on this point, I would resolve it in favor of appellant since Col-lip’s publication at best is an inert disclosure which while it remained a part of the published art since 1937, was unnoticed and, so far as this record discloses, wholly without significance in teaching how to solve the problems which appellant solved and for which he filed the present application. Except as Col-lip is now reconstructed by the examiner and the board with hindsight and with knowledge of appellant’s teachings, it seems to me it adds nothing to the solution of the problem faced by the art and which remained unsolved after Collip’s 1937 publication. Such a hindsight reconstruction is, of course, prohibited. Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721 (1943).
For the foregoing reasons, I would' modify the appealed decision, affirming it only as to the rejection of claim 12 on the second ground of rejection and reversing all grounds of rejection of claims 13-16, inclusive.
. The examiner’s rejection for this reason was “sustained as to all but one of the rejected claims.”
. “Lacking invention” is here taken to mean a rejection for obviousness under 35 U.S.C. § 103.
. The first two paragraphs of 35 U.S.C. § 112 are as follows:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject, matter which the applicant regards as his invention.”
. Cf. Lecture of Dr. Heinrich Hellfritz delivered June 13, 1962, at the Polytechnic Institute of Brooklyn; Ex parte Brian, Radley, Custis and Elson, (P.O. Bd. Appls.), 118 USPQ 242, 245.
. Sep claim 25 of the Pacz patent quoted by the majority.