## Facts

- Klaus Hafner filed two German patent applications in 1959 disclosing certain chemical compounds and methods of making them; the German filings did not disclose any utility.
- In 1960, within one year, Hafner filed a U.S. “parent” application combining the German disclosures and asserting foreign priority; the parent included limited utility statements but the claims were finally rejected under 35 U.S.C. § 112 for failing to disclose how the resins were put to use.
- In 1961, one German application was published, later used as an anticipating reference against Hafner’s U.S. claims.
- In 1964, Hafner filed a continuation-in-part (CIP) U.S. application adding an expanded disclosure of utility and “how to use,” the adequacy of which was not disputed under 35 U.S.C. §§ 101 and 112.
- The Patent Office rejected the CIP claims (claims 1, 3, and 4) as anticipated under 35 U.S.C. § 102 by (i) the published German application and (ii) a 1960 scientific article describing a method of making related compounds.
- Neither reference disclosed utility or detailed “how to use,” but both described the compounds and methods of preparation.
- The examiner’s rejections were affirmed by the Patent Office Board of Appeals, and Hafner appealed.

## Issues

1. For anticipation under 35 U.S.C. § 102, must a reference disclose utility and “how to use” to the same extent required of an applicant under 35 U.S.C. §§ 101 and 112?
2. May a CIP rely on a parent U.S. filing date and foreign priority dates to avoid § 102 prior art when the earlier applications lacked § 101/§ 112-compliant utility and use disclosure for the claimed subject matter?

## Decision

- The Court of Customs and Patent Appeals affirmed the Board of Appeals.
- The court held that a reference can anticipate under § 102 if it enables a person of ordinary skill to make the claimed invention; it need not disclose utility or “how to use” at the level required for patentability under §§ 101 and 112.
- The court held the CIP was not entitled to the earlier parent or foreign filing dates for the claims at issue because the earlier filings did not provide the utility and use disclosure required under §§ 101 and 112 for that subject matter.
- With the CIP’s effective date not reaching back, the cited German publication and the scientific article qualified as § 102 prior art and fully met the appealed claims.

## Legal Principles

- A prior-art reference anticipates under 35 U.S.C. § 102 if it discloses the claimed subject matter in a manner that enables a skilled artisan to make it; the reference need not include an applicant-level showing of utility or detailed instructions for use.
- The enablement demanded of an anticipating reference is not coextensive with the applicant’s obligations under 35 U.S.C. §§ 101 and 112 to establish utility and disclose how to make and use the invention.
- A continuation-in-part (and claims of foreign priority) receives an earlier effective filing date only for subject matter adequately supported in the earlier application; missing § 101/§ 112-compliant utility and use disclosure in the earlier filing defeats reliance on that earlier date for claims depending on later-added support.

## Conclusion

The court sustained anticipation rejections where the prior art enabled making the claimed compounds despite lacking stated utility, and it denied the CIP earlier priority because the earlier U.S. and foreign applications did not satisfy U.S. utility and use-disclosure requirements for the claimed subject matter.


In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969)