Page:Amgen Inc. v. Sanofi.pdf/18

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AMGEN INC. v. SANOFI

Opinion of the Court

claimed, not merely a subset. See id., at 475–476.[1]

Nor is a specification necessarily inadequate just because it leaves the skilled artist to engage in some measure of adaptation or testing. In Wood, a patent claimed a process for making bricks by mixing coal dust into clay. 5 How., at 4. The patent included “a general rule” about the proportion of dust and clay to use and offered two alternative proportions “where the clay has some peculiarity.” Id., at 5. The Court upheld the claim, recognizing that “some small difference in the proportions must occasionally be required” given the varieties of clay. Ibid. Similarly, in Minerals Separation, the Court dismissed a challenge to a claimed process for separating metal from mineral ores. 242 U. S., at 270. The record showed that “preliminary tests” were required to adapt the process to any particular ore. Ibid. Once more, the Court explained that “the certainty which the law requires in patents is not greater than is reasonable.” Ibid. And because the “composition of ores varies infinitely,” it was “impossible to specify in a patent the precise treatment which would be most successful and economical in each case.” Id., at 271.[2]


  1. See also Béné v. Jeantet, 129 U. S. 683, 684–686 (1889) (rejecting claim to method of shrinking coarse hair because the specification failed to give “one skilled in chemistry such an idea of the particular kinds and character of the chemicals, or combination of chemicals, with the relative proportions of each, as would enable him to use the invention without having to resort to experiments of his own to discover those ingredients”); Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U. S. 358, 385 (1928) (rejecting claims to process of treating rubber with “ ‘a disubstituted guanidine’ ” because “between fifty and one hundred substances” fit that description and the specification did not disclose “any general quality common to disubstituted guanidines which makes them all effective”).
  2. See also, e.g., Ives v. Hamilton, 92 U. S. 426, 429, 432 (1876) (upholding claim “for an improvement in sawmills” based on “curved guides at the upper end of the saw,” even though the specification did not “stat[e] the nature of the curve,” because a “good mechanic acquainted with the construction of sawmills, and having the patent and diagram before him,