## Facts

- A patent applicant sought claims covering apparatus and methods for producing “whiskers,” long, needle-like crystals grown from the vapor phase.
- The disclosed system used a heated chamber with a mixer above a heated vertical cylinder forming a precipitating zone with a temperature gradient (hotter at the top, cooler at the bottom).
- Four feed ingredients were identified only as “A,” “B,” “C,” and “D,” introduced into the mixer to create a whisker-producing vapor that flowed into the precipitating zone where crystals formed and were collected.
- The disclosure described an “optimum supersaturation zone” within the precipitating zone as the vapor moved through changing conditions, but did not specify how to set or measure the needed conditions.
- The application did not provide concrete identities for the ingredients or working parameters (e.g., temperature, pressure, or supersaturation ranges), nor a working example explaining why certain features (such as electron bombardment) were used.
- The examiner rejected all remaining claims under 35 U.S.C. § 112 (first paragraph), and the Patent Office Board of Appeals affirmed; the applicant appealed.

## Issues

1. Whether the specification enabled a person skilled in the art to make and use the claimed invention without undue experimentation as required by 35 U.S.C. § 112, first paragraph.
2. Whether the specification failed to disclose the best mode contemplated by the inventor for carrying out the invention under 35 U.S.C. § 112, first paragraph.

## Decision

- The court affirmed the Board’s decision sustaining rejection of all claims.
- The court held the disclosure was non-enabling because it omitted essential information needed to practice the invention, including key reactants and critical operating conditions.
- The court also agreed the application failed § 112’s best mode requirement given the absence of any specific, workable embodiment or parameters reflecting how the inventor actually carried out the process.

## Legal Principles

- Under 35 U.S.C. § 112, first paragraph, a patent specification must describe the invention in terms sufficient to enable a person of ordinary skill to make and use it without undue experimentation.
- When an invention’s operability depends on specific compositions and process conditions, a specification that substitutes placeholders (e.g., unnamed ingredients) and omits critical operating ranges is inadequate.
- The best mode requirement is not satisfied by an abstract description that withholds concrete embodiments or parameters the inventor contemplated for practicing the invention.

## Conclusion

The court upheld rejection of the application because the specification’s generalized, result-oriented disclosure—omitting ingredient identities and necessary process conditions—did not teach skilled artisans how to practice the claimed whisker-producing apparatus and method without undue experimentation and did not disclose the inventor’s best mode.


In re Glass, 492 F.2d 1228 (C.C.P.A. 1974)