## Facts

- Chemists John Paul Hogan and Robert L. Banks sought patent claims (13–15) in a 1971 application directed to a normally solid homopolymer of 4-methyl-1-pentene and specified properties (melting point range; wax-like character and thermal stability).
- The 1971 application was part of a continuity chain tracing back through a 1967 continuation, a 1956 divisional, and a 1956 continuation-in-part of 1953/1954 filings.
- The 1953 specification broadly taught making “solid polymers” from certain 1-olefin monomers (including 4-methyl-1-pentene) and provided extensive catalyst and process detail, examples, and tables.
- The applicants asserted priority under 35 U.S.C. § 120: claims 13 and 15 to the 1953 filing date and claim 14 to the 1956 filing date.
- The Patent and Trademark Office Board of Appeals affirmed rejections under 35 U.S.C. §§ 102, 103, 112 (first paragraph), and 132, relying in part on later publications (including a 1967 reference) to argue the earlier disclosures were non-enabling for the later-characterized polymer and that amendments introduced new matter.

## Issues

1. Whether post-filing publications may be used to show that an earlier specification was non-enabling under 35 U.S.C. § 112 (first paragraph) by redefining the state of the art as of the filing date.
2. Whether later articulation of properties of a species within an earlier disclosed genus constitutes “new matter” barred by 35 U.S.C. § 132.
3. Whether the appealed claims were properly rejected under 35 U.S.C. §§ 102 and 103, considering the applicants’ asserted effective filing dates and the cited prior art.

## Decision

- The court affirmed in part, reversed in part, and remanded.
- It held that the Board erred to the extent it used later publications to reconstruct the filing-date state of the art to defeat enablement and to support certain new-matter rejections.
- It recognized limited, permissible uses of post-filing evidence (e.g., proving background facts or universal scientific truths), but rejected its use to retroactively raise § 112 requirements by importing later-developed knowledge.
- It sustained some prior-art-based rejections and remanded for further proceedings consistent with the proper standard for evaluating enablement, new matter, and priority.

## Legal Principles

- Enablement under § 112 (first paragraph) is assessed as of the application’s effective filing date, from the standpoint of a person of ordinary skill at that time.
- Post-filing publications may be considered to establish limited factual propositions (e.g., universal scientific facts or characteristics of materials), but not to redefine the earlier “state of the art” to negate enablement or written description.
- A later-discovered or later-characterized property of a product may be treated as inherent and not “new matter” under § 132 if the earlier disclosure taught making the same class of products and the added property merely describes what the product already is.
- Priority and continuity under § 120 depend on whether the earlier application reasonably conveys and enables the later-claimed subject matter without impermissible new matter.

## Conclusion

The court limited the Patent Office’s reliance on post-filing publications in § 112 and § 132 analyses: later evidence can prove certain facts, but it cannot be used to retroactively reconstruct the filing-date knowledge base to defeat an otherwise sufficient disclosure; the case proceeded with a mixed affirmance, reversal, and remand.


In re Hogan, 559 F.2d 595 (C.C.P.A. 1977)