author: Mr. Justice Brennan Mr. Justice Harlan, Mr. Justice Black, Mr. Justice Stewart,

text:
    MISHKIN v. NEW YORK.
    No. 49.
    Argued December 7, 1965.
    Decided March 21, 1966.

      Emanuel Redfield argued the cause and filed a brief for appellant.

      H. Richard Uviller argued the cause for appellee. With him on the brief were Frank S. Hogan and Alan F. Leibowitz.

      Edward de Orazia filed a brief for Marshall Cohen et al., as amici curiae, urging reversal.
    Briefs of amici curiae, urging affirmance, were filed by Leo A. Larkin, Roger Arnebergh and Max P. Zall for the City of New York et al.; and by Charles H. Keating, Jr., and James J. Clancy for Citizens for Decent Literature, Inc., et al.
   Mr. Justice Brennan

delivered the opinion of the Court.

This case, like Ginzburg v. United States, ante, p. 463, also decided today, involves convictions under a criminal obscenity statute. A panel of three judges of the Court of Special Sessions of the City of New York found appellant guilty of violating § 1141 of the New York Penal Law by hiring others to prepare obscene books, publishing obscene books, and possessing obscene books with intent to sell them. 26 Misc. 2d 152, 207 N. Y. S. 2d 390 (1960). He was sentenced to prison terms aggregating three years and ordered to pay $12,000 in fines for these crimes. The Appellate Division, First Department, affirmed those convictions. 17 App. Div. 2d 243, 234 N. Y. S. 2d 342 (1962). The Court of Appeals affirmed without opinion. 15 N. Y. 2d 671, 204 N. E. 2d 209 (1964), remittitur amended, 15 N. Y. 2d 724, 205 N. E. 2d 201 (1965). We noted probable jurisdiction. 380 U. S. 960. We affirm.

Appellant was not prosecuted for anything he said or believed, but for what he did, for his dominant role in several enterprises engaged in producing and selling allegedly obscene books. Fifty books are involved in this case. They portray sexuality in many guises. Some depict relatively normal heterosexual relations, but more depict such deviations as sado-masochism, fetishism, and homosexuality. Many have covers with drawings of scantily clad women being whipped, beaten, tortured, or abused. Many, if not most, are photo-offsets of typewritten books written and illustrated by authors and artists according to detailed instructions given by the appellant. Typical of appellant’s instructions was that related by one author who testified that appellant insisted that the books be “full of sex scenes and lesbian scenes .... [T]he sex had to be very strong, it had to be rough, it had to be clearly spelled out. ... I had to write sex very bluntly, make the sex scenes very strong. . . . [T]he sex scenes had to be unusual sex scenes between men and women, and women and women, and men and men. . . . [H]e wanted scenes in which women were making love with women .... [H]e wanted sex scenes ... in which there were lesbian scenes. He didn’t call it lesbian, but he described women making love to women and men . . . making love to men, and there were spankings and scenes — sex in an abnormal and irregular fashion.” Another author testified that appellant instructed him “to deal very graphically with . . . the darkening of the flesh under flagellation . . . .” Artists testified in similar vein as to appellant’s instructions regarding illustrations and covers for the books.

All the books are cheaply prepared paperbound “pulps” with imprinted sales prices that are several thousand percent above costs. All but three were printed by a photo-offset printer who was paid 400 or 150 per copy, depending on whether it was a “thick” or “thin” book. The printer was instructed by appellant not to use appellant’s name as publisher but to print some fictitious name on each book, to “make up any name and address.” Appellant stored books on the printer’s premises and paid part of the printer’s rent for the storage space. The printer filled orders for the books, at appellant’s direction, delivering them to appellant’s retail store, Publishers’ Outlet, and, on occasion, shipping books to other places. Appellant paid the authors, artists, and printer cash for their services, usually at his bookstore.

I.

Appellant attacks § 1141 as invalid on its face, contending that it exceeds First Amendment limitations by proscribing publications that are merely sadistic or masochistic, that the terms “sadistic” and “masochistic” are impermissibly vague, and that the term “obscene” is also impermissibly vague. We need not decide the merits of the first two contentions, for the New York courts held in this case that the terms “sadistic” and “masochistic,” as well as the other adjectives used in § 1141 to describe proscribed books, are “synonymous with 'obscene.’ ” 26 Misc. 2d, at 154, 207 N. Y. S. 2d, at 393. The contention that the term “obscene” is also impermissibly vague fails under our holding in Roth v. United States, 354 U. S. 476, 491-492. Indeed, the definition of “obscene” adopted by the New York courts in interpreting § 1141 delimits a narrower class of conduct than that delimited under the Roth definition, People v. Richmond County News, Inc., 9 N. Y. 2d 578, 586-587, 175 N. E. 2d 681, 685-686 (1961), and thus § 1141, like the statutes in Roth, provides reasonably ascertainable standards of guilt.

Appellant also objects that § 1141 is invalid as applied, first, because the books he was convicted of publishing, hiring others to prepare, and possessing for sale are not obscene, and second, because the proof of scienter is inadequate.

1. The Nature of the Material. — The First Amendment prohibits criminal prosecution for the publication and dissemination of allegedly obscene books that do not satisfy the Roth definition of obscenity. States are free to adopt other definitions of obscenity only to the extent that those adopted stay within the bounds set by the constitutional criteria of the Roth definition, which restrict the regulation of the publication and sale of books to that traditionally and universally tolerated in our society.

The New York courts have interpreted obscenity in § 1141 to cover only so-called “hard-core pornography,” see People v. Richmond County News, Inc., 9 N. Y. 2d 578, 586-587, 175 N. E. 2d 681, 685-686 (1961), quoted in note 4, supra. Since that definition of obscenity is more stringent than the Roth definition, the judgment that the constitutional criteria are satisfied is implicit in the application of § 1141 below. Indeed, appellant’s sole contention regarding the nature of the material is that some of the books involved in this prosecution, those depicting various deviant sexual practices, such as flagellation, fetishism, and lesbianism, do not satisfy the prurient-appeal requirement because they do not appeal to a prurient interest of the “average person” in sex, that “instead of stimulating the erotic, they disgust and sicken.” We reject this argument as being founded on an unrealistic interpretation of the prurient-appeal requirement.

Where the material is designed for and primarily disseminated to a clearly defined deviant sexual group, rather than the public at large, the prurient-appeal requirement of the Roth test is satisfied if the dominant theme of the material taken as a whole appeals to the prurient interest in sex of the members of that group. The reference to the “average” or “normal” person in Roth, 354 U. S., at 489-490, does not foreclose this holding. In regard to the prurient-appeal requirement, the concept of the “average” or “normal” person was employed in Roth to serve the essentially negative purpose of expressing our rejection of that aspect of the Hicklin test, Regina v. Hicklin, [1868] L. R. 3 Q. B. 360, that made the impact on the most susceptible person determinative. We adjust the prurient-appeal requirement to social realities by permitting the appeal of this type of material to be assessed in terms of the sexual interests of its intended and probable recipient group; and since our holding requires that the recipient group be defined with more specificity than in terms of sexually immature persons, it also avoids the inadequacy of the most-susceptible-person facet of the Hicklin test.

No substantial claim is made that the books depicting sexually deviant practices are devoid of prurient appeal to sexually deviant groups. The evidence fully establishes that these books were specifically conceived and marketed for such groups. Appellant instructed his authors and artists to prepare the books expressly to induce their purchase by persons who would probably be sexually stimulated by them. It was for this reason that appellant “wanted an emphasis on beatings and fetishism and clothing — irregular clothing, and that sort of thing, and again sex scenes between women; always sex scenes had to be very strong.” And to be certain that authors fulfilled his purpose, appellant furnished them with such source materials as Caprio, Variations in Sexual Behavior, and Krafft-Ebing, Psychopathia Sexualis. Not only was there proof of the books’ prurient appeal, compare United States v. Klaw, 350 F. 2d 155 (C. A. 2d Cir. 1965), but the proof was compelling; in addition appellant’s own evaluation of his material confirms such a finding. See Ginzburg v. United States, ante, p. 463.

2. Scienter.—In People v. Finkelstein, 9 N. Y. 2d 342, 344-345, 174 N. E. 2d 470, 471 (1961), the New York Court of Appeals authoritatively interpreted § 1141 to require the “vital element of scienter,” and it defined the required mental element in these terms:

“A reading of the statute [§ 1141] as a whole clearly indicates that only those who are in some manner aware of the character of the material they attempt to distribute should be punished. It is not innocent but calculated purveyance of filth which is exorcised . ...” (Emphasis added.)

Appellant’s challenge to the validity of § 1141 founded on Smith v. California, 361 U. S. 147, is thus foreclosed, and this construction of § 1141 makes it unnecessary for us to define today “what sort of mental element is requisite to a constitutionally permissible prosecution.” Id., at 154. The Constitution requires proof of scienter to avoid the hazard of self-censorship of constitutionally protected material and to compensate for the ambiguities inherent in the definition of obscenity. The New York definition of the scienter required by § 1141 amply serves those ends, and therefore fully meets the demands of the Constitution. Cf. Roth v. United States, 354 U. S., at 495-496 Warren, C. J., concurring).

Appellant’s principal argument is that there was insufficient proof of scienter. This argument is without merit. The evidence of scienter in this record consists, in part, of appellant’s instructions to his artists and writers; his efforts to disguise his role in the enterprise that published and sold the books; the transparency of the character of the material in question, highlighted by the titles, covers, and illustrations; the.massive number of obscene books appellant published, hired others to prepare, and possessed for sale; the repetitive quality of the sequences and formats of the books; and the exorbitant prices marked on the books. This evidence amply shows that appellant was “aware of the character of the material” and that his activity was “not innocent but calculated purveyance of filth.”

II.

Appellant claims that all but one of the books were improperly admitted in evidence because they were fruits of illegal searches and seizures. This claim is not capable in itself of being brought here by appeal, but only by a petition for a writ of certiorari under 28 U. S. C. § 1257 (3) (1964 ed.) as specifically setting up a federal constitutional right. Nevertheless, since appellant challenged the constitutionality of § 1141 in this prosecution, and the New York courts sustained the statute, the case is properly here on appeal, and our unrestricted notation of probable jurisdiction justified appellant’s briefing of the search and seizure issue. Flournoy v. Weiner, 321 U. S. 253, 263; Prudential Ins. Co. v. Cheek, 259 U. S. 530, 547. The nonappealable issue is treated, however, as if contained in a petition for a writ of certiorari, see 28 U. S. C. § 2103 (1964 ed.), and the unrestricted notation of probable jurisdiction of the appeal is to be understood as a grant of the writ on that issue. The issue thus remains within our certiorari jurisdiction, and we may, for good reason, even at this stage, decline to decide the merits of the issue, much as we would dismiss a writ of certiorari as improvidently granted. We think that this is a case for such an exercise of our discretion.

The far-reaching and important questions tendered by this claim are not presented by the record with sufficient, clarity to require or justify their decision. Appellant’s standing to assert the claim in regard to all the seizures is not entirely clear; there is no finding on the extent or nature of his interest in two book stores, the Main Stem Book Shop and Midget Book Shop, in which some of the books were seized. The State seeks to justify the basement storeroom seizure, in part, on the basis of the consent of the printer-accomplice; but there were no findings as to the authority of the printer over the access to the storeroom, or as to the voluntariness of his alleged consent. It is also maintained that the seizure in the storeroom was made on the authority of a search warrant; yet neither the affidavit upon which the warrant issued nor the warrant itself is in the record. Finally, while the search and seizure issue has a First Amendment aspect because of the alleged massive quality of the seizures, see A Quantity of Copies of Books v. Kansas, 378 U. S. 205, 206 (opinion of Brennan, J.); Marcus v. Search Warrant, 367 U. S. 717, the record in this regard is inadequate. There is neither evidence nor findings as to how many of the total available copies of the books in the various bookstores were seized and it is impossible to determine whether the books seized in the basement storeroom were on the threshold of dissemination. Indeed, this First Amendment aspect apparently was not presented or considered by the state courts, nor was it raised in appellant’s jurisdictional statement; it appeared for the first time in his brief on the merits.

In light of these circumstances, which were not fully apprehended at the time we took the case, we decline to reach the merits of the search and seizure claim; insofar as notation of probable jurisdiction may be regarded as a grant of the certiorari writ on the search and seizure issue, that writ is dismissed as improvidently granted. “Examination of a case on the merits . . . may bring into ‘proper focus’ a consideration which . . . later indicates that the grant was improvident.” The Monrosa v. Carbon Black, 359 U. S. 180, 184.

Affirmed.

[For dissenting opinion of MR. Justice Douglas, see ante, p. 482.]

APPENDIX TO OPINION OF THE COURT.

THE CONVICTIONS BEING REVIEWED.

§ 1141 Counts Naming the Book

Title of Book Pub- Hiring Possession lishing Others

Chances Go Around 1 63 111 H

Impact 2 64 112 (N

Female Sultan 3 65 113 M

Satin Satellite 4 rH

Her Highness 5 67 115 lO

Mistress of Leather 6 68 116 CO

Educating Edna 7 69 117 N

Strange Passions 8 70 118

The Whipping Chorus Girls 9 71 119

Order Of The Day and Bound Maritally 10 72 120

11 Dance With the Dominant Whip 11 73 121

12 Cult Of The Spankers 12 74 122

13 Confessions 13 75 123

14 & 46 The Hours Of Torture 14 & 40 76 124

15&47 Bound In Rubber 15&41 77 125

16 & 48 Arduous Figure Training at Bondhaven 16&42 78 126

17&49 Return Visit To Fetterland 17&43 79 127

18 Fearful Ordeal In Restraintland 18 80 128

19 & 50 Women In Distress 19&44 81 129

20 & 54 Pleasure Parade No. 1 20&48 82 130

21 & 57 Screaming Flesh 21 & 51 86 134

22 & 58 Fury 22 & 52

23 So Firm So Fully Packed 23 87 135

24 I’ll Try Anything Twice 24

25 & 59 26 Masque Catanis 25 & 53 26

§ 1141 Counts Naming the Book

Title of Book Pub- Hiring lishing Others Possession

The Violated Wrestler 89 137 27

Betrayal 28

Swish Bottom 29 90 138

Raw Dames 30 91 139

The Strap Returns 31 92 140

Dangerous Years 32 93 141

Columns of Agony 37 95 144

The Tainted Pleasure 38 96 145

Intense Desire 39 97 146

Pleasure Parade No. 4 45 85 133

Pleasure Parade No. 3 46 84 132

Pleasure Parade No. 2 47 83 131

Sorority Girls Stringent Initiation 49 98 147

Terror At The Bizarre Museum 50 99 148

Temptation 57

Peggy’s Distress On Planet Venus 58 101 150

Ways of Discipline 59 102 151

Mrs. Tyrant’s Finishing School 60 103 152

Perilous Assignment 61 104 153

Bondage Correspondence 107 156

Woman Impelled 106 155

Eye Witness 108 157

Stud Broad 109 158

Queen Bee no-159

Mr. Justice Harlan,

concurring.

On the issue of obscenity I concur in the judgment of affirmance on premises stated in my dissenting opinion in A Book Named “John Cleland’s Memoirs of a Woman of Pleasure” v. Attorney General of Massachusetts, ante, p. 455. In all other respects I agree with and join the Court’s opinion.

Mr. Justice Black,

dissenting.

The Court here affirms convictions and prison sentences aggregating three years plus fines totaling $12,000 imposed on appellant Mishkin based on state charges that he hired others to prepare and publish obscene books and that Mishkin himself possessed such books. This Court has held in many cases that the Fourteenth Amendment makes the First applicable to the States. See for illustration cases collected in my concurring opinion in Speiser v. Randall, 357 U. S. 513, 530. Consequently upon the same grounds that I dissented from a five-year federal sentence imposed upon Ginzburg in No. 42, ante, p. 476, for sending “obscene” printed matter through the United States mails I dissent from affirmance of this three-year state sentence imposed on Mishkin. Neither in this case nor in Ginzburg have I read the alleged obscene matter. This is because I believe for reasons stated in my dissent in Ginzburg and in many other prior cases that this Court is without constitutional power to censor speech or press regardless of the particular subject discussed. I think the federal judiciary because it is appointed for life is the most appropriate tribunal that could be selected to interpret the Constitution and thereby mark the boundaries of what government agencies can and cannot do. But because of life tenure, as well as other reasons, the federal judiciary is the least appropriate branch of government to take over censorship- responsibilities by deciding what pictures and writings people throughout the land can be permitted to see and read. When this Court makes particularized rules on what people can see and read, it determines which policies are reasonable and right, thereby performing the classical function of legislative bodies directly responsible to the people. Accordingly, I wish once more to express my objections to saddling this Court with the irksome and inevitably unpopular and unwholesome task of finally deciding by a case-by-case, sight-by-sight personal judgment of the members of this Court what pornography (whatever that means) is too hard core for people to see or read. If censorship of views about sex or any other subject is constitutional then I am reluctantly compelled to say that I believe the tedious, time-consuming and unwelcome responsibility for finally deciding what particular discussions or opinions must be suppressed in this country, should, for the good of this Court and of the Nation, be vested in some governmental institution or institutions other than this Court.

I would reverse these convictions. The three-year sentence imposed on Mishkin and the five-year sentence imposed on Ginzburg for expressing views about sex are minor in comparison with those more lengthy sentences that are inexorably bound to follow in state and federal courts as pressures and prejudices increase and grow more powerful, which of course they will. Nor is it a sufficient answer to these assuredly ever-increasing punishments to rely on this Court’s power to strike down “cruel and unusual punishments” under the Eighth Amendment. Distorting or stretching that Amendment by reading it as granting unreviewable power to this Court to perform the legislative function of fixing punishments for all state and national offenses offers a sadly inadequate solution to the multitudinous problems generated by what I consider to be the un-American policy of censoring the thoughts and opinions of people. The only practical answer to these concededly almost unanswerable problems is, I think, for this Court to decline to act as a national board of censors over speech and press but instead to stick to its clearly authorized constitutional duty to adjudicate cases over things and conduct. Halfway censorship methods, no matter how laudably motivated, cannot in my judgment protect our cherished First Amendment freedoms from the destructive aggressions of both state and national government. I would reverse this case and announce that the First and Fourteenth Amendments taken together command that neither Congress nor the States shall pass laws which in any manner abridge freedom of speech and press — whatever the subjects discussed. I think the Founders of our Nation in adopting the First Amendment meant precisely that the Federal Government should pass “no law” regulating speech and press but should confine its legislation to the regulation of conduct. So too, that policy of the First Amendment made applicable to the States by the Fourteenth, leaves the States vast power to regulate conduct but no power at all, in my judgment, to make the expression of views a crime.

Mr. Justice Stewart,

dissenting.

The appellant was sentenced to three years in prison for publishing numerous books. However tawdry those books may be, they are not hard-core pornography, and their publication is, therefore, protected by the First and Fourteenth Amendments. Ginzburg v. United States, ante, p. 497 (dissenting opinion). The judgment should be reversed.

       Section 1141 of the Penal Law, in pertinent part, reads as follows:
      “1. A person who . . . has in his possession with intent to sell, lend, distribute . . . any obscene, lewd, lascivious, filthy, indecent, sadistic, masochistic or disgusting book ... or who . . . prints, utters, publishes, or in any manner manufactures, or prepares any such book ... or who
      “2. In any manner, hires, employs, uses or permits any person to do or assist in doing any act or thing mentioned in this section, or any of them,
      “Is guilty of a misdemeanor ....

      “4. The possession by any person of six or more identical or similar articles coming within the provisions of subdivision one of this section is presumptive evidence of a violation of this section.
      “5. The publication for sale of any book, magazine or pamphlet designed, composed or illustrated as a whole to appeal to and commercially exploit prurient interest by combining covers, pictures, drawings, illustrations, caricatures, cartoons, words, stories and advertisements or any combination or combinations thereof devoted to the description, portrayal or deliberate suggestion of illicit sex, including adultery, prostitution, fornication, sexual crime and sexual perversion or to the exploitation of sex and nudity by the presentation of nude or partially nude female figures, posed, photographed or otherwise presented in a manner calculated to provoke or incite prurient interest, or any combination or combinations thereof, shall be a violation of this section.”

       The information charged 159 counts of violating § 1141; in each instance a single count named a single book, although often the same book was the basis of three counts, each alleging one of the three types of § 1141 offenses. Of these, 11 counts were dismissed on motion of the prosecutor at the outset of the trial and verdicts of acquittal were entered on seven counts at the end of trial. The remaining § 1141 counts on which appellant was convicted are listed in the Appendix to this opinion.
      Appellant was also convicted on 33 counts charging violations of § 330 of the General Business Law for failing to print the publisher’s and printer’s names and addresses on the books. The Appellate Division reversed the convictions under these counts, and the Court of Appeals affirmed. The State has not sought review of that decision in this Court.

       The trial court divided the counts into five groups for purposes of sentencing. One group consisted of the possession counts concerning books seized from a basement storeroom in a warehouse; a second group of possession counts concerned books seized from appellant’s retail bookstore, Publishers’ Outlet; the third consisted of the publishing counts; the fourth consisted of the counts charging him with hiring others to prepare the books, and the fifth consisted of the counts charging violations of the General Business Law. Sentences of one year and a $3,000 fine were imposed on one count of each of the first four groups; the prison sentences on the first three were made consecutive and that on the count in the fourth group was made concurrent with that in the third group. A $500 fine was imposed on one count in the fifth group. Sentence was suspended on the convictions on all other counts. The suspension of sentence does not render moot the claims as to invalidity of the convictions on those counts.

       “It [obscene material covered by § 1141] focuses predominantly upon what is sexually morbid, grossly perverse and bizarre, without any artistic or scientific purpose or justification. Recognizable ‘by the insult it offers, invariably, to sex, and to the human spirit’ (D. H. Lawrence, Pornography and Obscenity [1930], p. 12), it is to be differentiated from the bawdy and the ribald. Depicting dirt for dirt’s sake, the obscene is the vile, rather than the coarse, the blow to sense, not merely to sensibility. It smacks, at times, of fantasy and unreality, of sexual perversion and sickness and represents, according to one thoughtful scholar, ‘a debauchery of the sexual faculty.’ (Murray, Literature and Censorship, 14 Books on Trial 393, 394; see, also, Lockhart and McClure, Censorship of Obscenity: The Developing Constitutional Standards, 45 Minn. L. Rev. 5, 65.)” 9 N. Y. 2d, at 587, 175 N. E. 2d, at 686.
      See also People v. Fritch, 13 N. Y. 2d 119, 123, 192 N. E. 2d 713, 716 (1963):
      “In addition to the foregoing tests imposed by the decisions of the [United States] Supreme Court, this court interpreted section 1141 of the Penal Law in People v. Richmond County News ... as applicable only to material which may properly be termed ‘hard-core pornography.’ ”

       The stringent scienter requirement of §1141, as interpreted in People v. Finkelstein, 9 N. Y. 2d 342, 345, 174 N. E. 2d 470, 472 (1961), also eviscerates much of appellant’s vagueness claim. See, infra, pp. 510-512. See generally, Boyce Motor Lines, Inc. v. United States, 342 U. S. 337, 342; American Communications Assn. v. Douds, 339 U. S. 382, 412-413; Screws v. United States, 325 U. S. 91, 101—104 (opinion of Mr. Justice Douglas) ; United States v. Ragen, 314 U. S. 513, 524; Gorin v. United States, 312 U. S. 19, 27-28; Hygrade Provision Co. v. Sherman, 266 U. S. 497, 501-503; Omaechevarria v. Idaho, 246 U. S. 343, 348.

       It could not be plausibly maintained that all of the appellant’s books, including those dominated by descriptions of relatively normal heterosexual relationships, are devoid of the requisite prurient appeal.

       See Manual Enterprises, Inc. v. Day, 370 U. S. 478, 482 (opinion of Harlan, J.); Lockhart and McClure, Censorship of Obscenity: The Developing Constitutional Standards, 45 Minn. L. Rev. 5, 72-73 (1960).
      It is true that some of the material in Alberts v. California, decided with Roth, resembled the deviant material involved here. But no issue involving the obscenity of the material was before us in either case. 354 TJ. S., at 481, n. 8. The basic question for decision there was whether the publication and sale of obscenity, however defined, could be criminally punished in light of First Amendment guarantees. Our discussion of definition was not intended to develop all the nuances of a definition required by the constitutional guarantees.

       See generally, 1 American Handbook of Psychiatry 593-604 (Arieti ed. 1959), for a description of the pertinent types of deviant sexual groups.

       For a similar scienter requirement see Model Penal Code §251.4 (2); Commentary, Model Penal Code (Tentative Draft No. 6, 1957), 14, 49-51; cf. Schwartz, Morals Offenses and the Model Penal Code, 63 Col. L. Rev. 669, 677 (1963).
      We do not read Judge Froessel’s parenthetical reference to knowledge of the contents of the books in his opinion in People v. Finkelstein, 11 N. Y. 2d 300, 304, 183 N. E. 2d 661, 663 (1962), as a modification of this definition of scienter. Cf. People v. Fritch, 13 N. Y. 2d 119, 126, 192 N. E. 2d 713, 717-718 (1963).

       The scienter requirement set out in the text would seem to be, as a matter of state law, as applicable to publishers as it is to booksellers; both types of activities are encompassed within subdivision 1 of § 1141. Moreover, there is no need for us to speculate as to whether this scienter requirement is also present in subdivision 2 of § 1141 (making it a crime to hire others to prepare obscene books), for appellant’s convictions for that offense involved books for the publication of which he was also convicted.
      No constitutional claim was asserted below or in this Court as to the possible duplicative character of the hiring and publishing counts.

       The first appeal in Finkelstein defining the scienter required by § 1141 was decided after this case was tried, but before the Appellate Division and Court of Appeals affirmed these convictions. We therefore conclude that the state appellate courts were satisfied that the § 1141 scienter requirement was correctly applied at trial.
      The § 1141 counts did not allege appellant’s knowledge of the character of the books, but appellant has not argued, below or here, that this omission renders the information constitutionally inadequate.

       Unlike the claim here, the challenges decided in the appeals in Marcus v. Search Warrant, 367 U. S. 717, and A Quantity of Copies of Books v. Kansas, 378 U. S. 205, implicated the constitutional validity of statutory schemes establishing procedures for seizing the books.

      See Ginzburg v. United States, ante, p. 497, at 499, note 3 (dissenting opinion). Moreover, there was no evidence at all that any of the books are the equivalent of hard-core pornography in the eyes of any particularized group of readers. Cf. United States v. Klaw, 350 F. 2d 155 (C. A. 2d Cir.).
      Although the New York Court of Appeals has purported to interpret § 1141 to cover only what it calls “hard-core pornography,” this case makes abundantly clear that that phrase has by no means been limited in New York to the clearly identifiable and distinct class of material I have described in Ginzburg v. United States, ante, p. 497, at 499, note 3 (dissenting opinion).


source: Caselaw Access Project

author: Mr. Justice Fortas Mr. Justice Harlan,

license: Public Domain

text:
    BRENNER, COMMISSIONER OF PATENTS v. MANSON.
    No. 58.
    Argued November 17, 1965.
    Decided March 21, 1966.

      Paul Bender argued the cause for petitioner, pro hac vice, by special leave of Court. With him on the brief were Solicitor General Marshall, Assistant Attorney General Douglas, Sherman L. Cohn and Edward Berlin.

      Dean Laurence argued the cause for respondent. With him on the brief were Herbert I. Sherman and John L. White.

      W. Brown Morton, Jr., and Ellsworth H. Mosher filed a brief for the American Patent Law Association, as amicus curiae, urging affirmance.
   Mr. Justice Fortas

delivered the opinion of the Court.

This case presents two questions of importance to the administration of the patent laws: First, whether this Court has certiorari jurisdiction, upon petition of the Commissioner of Patents, to review decisions of the Court of Customs and Patent Appeals; and second, whether the practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. The facts are as follows:

In December 1957, Howard Ringold and George Rosen-kranz applied for a patent on an allegedly novel process for making certain known steroids. They claimed priority as of December 17, 1956, the date on which they had filed for a Mexican patent. United States Patent No. 2,908,693 issued late in 1959.

In January 1960, respondent Manson, a chemist engaged in steroid research, filed an application to patent precisely the same process described by Ringold and Rosenkranz. He asserted that it was he who had discovered the process, and that he had done so before December 17, 1956. Accordingly, he requested that an “interference” be declared in order to try out the issue of priority between his claim and that of Ringold and Rosenkranz.

A Patent Office examiner denied Manson’S application, and the denial was affirmed by the Board of Appeals within the Patent Office. The ground for rejection was the failure “to disclose any utility for” the chemical compound produced by the process. Letter of Examiner, dated May 24, 1960. This omission was not cured, in the opinion of the Patent Office, by Manson’s reference to an article in the November 1956 issue of the Journal of Organic Chemistry, 21 J. Org. Chem. 1333-1335, which revealed that steroids of a class which included the compound in question were undergoing screening for possible tumor-inhibiting effects in mice, and that a homologue adjacent to Manson’s steroid had proven effective in that role. Said the Board of Appeals, “It is our view that the statutory requirement of usefulness of a product cannot be presumed merely because it happens to be closely related to another compound which is known to be useful.”

The Court of Customs and Patent Appeals (hereinafter CCPA) reversed, Chief Judge Worley dissenting. 52 C. C. P. A. (Pat.) 739, 745, 333 F. 2d 234, 237-238. The court held that Manson was entitled to a declaration of interference since “where a claimed process produces a known product it is not necessary to show utility for the product,” so long as the product “is not alleged to be detrimental to the public interest.” Certiorari was granted, 380 U. S. 971, to resolve this running dispute over what constitutes “utility” in chemical process claims, as well as to answer the question concerning our certiorari jurisdiction.

I.

Section 1256 of Title 28 U. S. C. (1964 ed.), enacted in 1948, provides that “Cases in the Court of Customs and Patent Appeals may be reviewed by the Supreme Court by writ of certiorari.” This unqualified language would seem to foreclose any challenge to our jurisdiction in the present case. Both the Government and the respondent urge that we have certiorari jurisdiction over patent decisions of the CCPA, although the latter would confine our jurisdiction to those petitions filed by dissatisfied applicants and would deny the Commissioner of Patents the right to seek certiorari. This concert of opinion, does not settle the basic question because jurisdiction cannot be conferred by consent of the parties. The doubt that does exist stems from a decision of this Court, rendered in January 1927, in Postum Cereal Co. v. California Fig Nut Co., 272 U. S. 693, which has been widely interpreted as precluding certiorari jurisdiction over patent and trademark decisions of the CCPA.

Postum, however, was based upon a statutory scheme materially different from the present one. Postum involved a proceeding in the Patent Office to cancel a trademark. The Commissioner of Patents rejected the application. An appeal was taken to the then Court of Appeals for the District of Columbia, which in 1927 exercised the jurisdiction later transferred to the CCPA. Under the statutory arrangement in effect at the time, the judgment of the Court of Appeals was not definitive because it was not an order to the Patent Office determinative of the controversy. A subsequent bill in equity could be brought in the District Court and it was possible that a conflicting adjudication could thus be obtained. On this basis, the Court held that it could not review the decision of the Court of Appeals. It held that the conclusion of the Court of Appeals was an “administrative decision” rather than a “judicial judgment”: “merely an instruction to the Commissioner of Patents by a court which is made part of the machinery of the Patent Office for administrative purposes.” 272 U. S., at 698-699. Therefore, this Court concluded, the proceeding in the Court of Appeals — essentially administrative in nature — was neither case nor controversy within the meaning of Article III of the Constitution. Congress might confer such “administrative” tasks upon the courts of the District of Columbia, wrote Chief Justice Taft, but it could not empower this Court to participate therein.

Congress soon amended the statutory scheme. In March of 1927 it provided that an action in the District Court was to be alternative and not cumulative to appellate review, that it could not be maintained to overcome

an adjudication in the Court of Appeals. In 1929 Congress transferred appellate jurisdiction over the Commissioner’s decisions from the Court of Appeals to what had been the Court of Customs Appeals and was now styled the Court of Customs and Patent Appeals. Whereas the Court of Appeals had been empowered to take additional evidence and to substitute its judgment for that of the Commissioner, the CCPA was confined to the record made in the Patent Office. Compare Federal Communications Comm’n v. Pottsville Broadcasting Co., 309 U. S. 134, 144-145. Despite these changes, however, Postum had acquired a life of its own. It continued to stand in the way of attempts to secure review here of CCPA decisions respecting the Commissioner of Patents. See, e. g., McBride v. Teeple, 311 U. S. 649, denying certiorari for “want of jurisdiction” on the authority of Postum.

This was the background against which Congress, in its 1948 codification of statutes pertaining to the judiciary, enacted § 1256, blandly providing in unqualified language for review on certiorari of “[cjases in the Court of Customs and Patent Appeals.” Nothing in the legislative materials relating to the statute, except its language, is of assistance to us in the resolution of the present problem: Did the statutory changes which followed Postura mean that a patent decision by the CCPA was a “judicial” determination reviewable by this Court under Article III? And, if so, was § 1256 intended to create such jurisdiction?

Assistance came with the 1958 revision of the Judicial Code. Congress there declared the CCPA “a court established under article III . . . ,” that is, a constitutional court exercising judicial rather than administrative power. 28 U. S. C. § 211 (1964 ed.). In 1962 this Court addressed itself to the nature and status of the CCPA. Olidden Co. v. Zdanok, 370 U. S. 530, raised the question whether a judge of the CCPA was an Article III judge, capable of exercising federal judicial power. In answering that question in the affirmative, MR. Justice Harlan's opinion, for three of the seven Justices participating, expressly left open the question whether § 1256 conferred certiorari jurisdiction over patent and trademark cases decided in the CCPA, 370 U. S., at 578 n. 49. It suggested, however, that Postura might be nothing-more than a museum piece. The opinion noted that Postura “must be taken to be limited to the statutory scheme in existence before” 1929. 370 U. S., at 579. The concurring opinion of Mr. Justice Clark, in which The Chief Justice joined, did not reflect any difference on this point.

Thus, the decision sought to be reviewed is that of an Article III court. It is “judicial” in character. It is not merely an instruction to the Commissioner or part of the “administrative machinery” of the Patent Office. It is final and binding in the usual sense. In sum, Postura has no vitality in the present setting, and there remains no constitutional bar to our jurisdiction.

Having arrived at this conclusion, we have no difficulty in giving full force and effect to the generality of the language in § 1256. It would be entirely arbitrary for us to assume, despite the statutory language, that Congress in 1948 intended to enshrine Postum — dependent as it was upon a statutory scheme fundamentally altered in 1927 and 1929 — as a hidden exception to the sweep of § 1256. The contrary is more plausible: that by using broad and unqualified language, Congress intended our certiorari jurisdiction over CCPA cases to be as broad as the Constitution permits.

This conclusion is reinforced by reference to the anomalous consequences which would result were we to adopt a contrary view of § 1256. Determinations of the Patent Office may be challenged either by appeal to the CCPA or by suit instituted in the United States District Court for the District of Columbia. 35 U. S. C. § 145, 28 U. S. C. § 1542 (1964 ed.). Where the latter route is elected, the decision obtained may be reviewed in the Court of Appeals for the District of Columbia Circuit, and ultimately in this Court upon writ of certiorari. Hoover Co. v. Coe, 325 U. S. 79. It would be strange indeed if corresponding certiorari jurisdiction did not exist where the alternative route was elected. Were that so, in the event of conflict between the CCPA and the courts of the District of Columbia, resolution by this Court would be achievable only if the litigants chose to proceed through the latter. Obviously, the orderly administration both of our certiorari jurisdiction and of the patent laws requires that ultimate review be available in this Court, regardless of the route chosen by the litigants.

We therefore conclude that § 1256 authorizes the grant of certiorari in the present case. We now turn to the merits.

II.

Our starting point is the proposition, neither disputed nor disputable, that one may patent only that which is “useful.” In Graham v. John Deere Co., ante, p.' 1, at 5-10, we have reviewed the history of the requisites of patentability, and it need not be repeated here. Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation, beginning with the first patent law in 1790 and culminating in the present law’s provision that

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

As is so often the case, however, a simple, everyday word can be pregnant with ambiguity when applied to the facts of life. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility— other than as a possible object of scientific inquiry — has not yet been evidenced. It was not long ago that agency and court seemed of one mind on the question. In Application of Bremner, 37 C. C. P. A. (Pat.) 1032, 1034, 182 F. 2d 216, 217, the court affirmed rejection by the Patent Office of both process and product claims. It noted that “no use for the products claimed to be developed by the processes had been shown in the specification.” It held that “It was never intended that a patent be granted upon a product, or a process producing a product, unless such product be useful.” Nor was this new doctrine in the court. See Thomas v. Michael, 35 C. C. P. A. (Pat.) 1036, 1038-1039, 166 F. 2d 944, 946-947.

The Patent Office has remained steadfast in this view. The CCPA, however, has moved sharply away from Bremner. The trend began in Application of Nelson, 47 C. C. P. A. (Pat.) 1031, 280 F. 2d 172. There, the court reversed the Patent Office’s rejection of a claim on a process yielding chemical intermediates “useful to chemists doing research on steroids,” despite the absence of evidence that any of the steroids thus ultimately produced were themselves “useful.” The trend has accelerated, culminating in the present case where the court held it sufficient that a process produces the result intended and is not “detrimental to the public interest.” 52 C. C. P. A. (Pat.), at 745, 333 F. 2d, at 238.

It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes. Even if we knew precisely what Congress meant in 1790 when it devised the “new and useful” phraseology and in subsequent re-enactments of the test, we should have difficulty in applying it in the context of contemporary chemistry where research is as comprehensive as man’s grasp and where little or nothing is wholly beyond the pale of “utility” — if that word is given its broadest reach.

Respondent does not — -at least in the first instance— rest upon the extreme proposition, advanced by the court below, that a novel chemical process is patentable so long as it yields the intended product and so long as the product is not itself “detrimental.” Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is “useful” within the meaning of § 101 if it produces a compound whose potential usefulness is under investigation by serious scientific researchers, although he urges this position, too, as an alternative basis for affirming the decision of the CCPA. Rather, he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under the Patent Office’s reading of § 101. The claim is that the supporting affidavits filed pursuant to Rule 204 (b), by reference to Ringold’s 1956 article, reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor-inhibiting effects in mice, and that this discloses the requisite utility. We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the “utility” requirement has not been met.

Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumor-inhibiting effect in mice, we would not overrule the Patent Office finding that respondent has not made such a showing. The Patent Office held that, despite the reference to the adjacent homologue, respondent’s papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor-inhibiting characteristics. Indeed, respondent himself recognized that the presumption that adjacent homologues have the same utility has been challenged in the steroid field because of “a greater known unpredictability of compounds in that field.” In these circumstances and in this technical area, we would not overturn the finding of the Primary Examiner, affirmed by the Board of Appeals and not challenged by the CCPA.

The second and third points of respondent’s argument present issues of much importance. Is a chemical process “useful” within the meaning of § 101 either (1) because it works — i. e., produces the intended product? or (2) because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation? These contentions present the basic problem for our adjudication. Since we find no specific assistance in the legislative materials underlying § 101, we are remitted to an analysis of the problem in light of the general intent of Congress, the purposes of the patent system, and the implications of a decision one way or the other.

In support of his plea that we attenuate the requirement of “utility,” respondent relies upon Justice Story’s well-known statement that a “useful” invention is one “which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant” — and upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community, thus widening the search for uses and increasing the fund of scientific knowledge. Justice Story’s language sheds little light on our subject. Narrowly read, it does no more than compel us to decide whether the invention in question is “frivolous and insignificant” — a query no easier of application than the one built into the statute. Read more broadly, so as to allow the patenting of any invention not positively harmful to society, it places such a special meaning on the word “useful” that we cannot accept it in the absence of evidence that Congress so intended. There are, after all, many things in this world which may not be considered “useful” but which, nevertheless, are totally without a capacity for harm.

It is true, of course, that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. The inventor of the process, or the corporate organization by which he is employed, has some incentive to keep the invention secret while uses for the product are searched out. However, in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible — while broadening the scope of the claim as widely as possible — the argument based upon the virtue of disclosure must be warily evaluated. Moreover, the pressure for secrecy is easily exaggerated, for if the inventor of a process cannot himself ascertain a “use” for that which his process yields, he has every incentive to make his invention known to those able to do so. Finally, how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent, there is little incentive for others to undertake a search for uses.

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. Until the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation. It may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public. The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point — where specific benefit exists in currently available form — there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. Respondent appears to concede that with respect to a product, as opposed to a process, Congress has struck the balance on the side of non-patentability unless “utility” is shown. Indeed, the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole “'utility” consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product. That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself.

This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something “useful,” or that we are blind to the prospect that what now seems without “use” may tomorrow command the grateful attention of the public. But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. “[A] patent system must be related to the world of commerce rather than to the realm of philosophy. . . .”

The judgment of the CCPA is Reversed.

Mr. Justice Douglas, while acquiescing in Part I of the Court’s opinion, dissents on the merits of the controversy for substantially the reasons stated by Mr. Justice Harlan.

Mr. Justice Harlan,

concurring in part and dissenting in part.

While I join the Court’s opinion on the issue of cer-tiorari jurisdiction, I cannot agree with its resolution of the important question of patentability.

Respondent has contended that a workable chemical process, which is both new and sufficiently nonobvious to satisfy the patent statute, is by its existence alone a contribution to chemistry and “useful” as the statute employs that term. Certainly this reading of “useful” in the statute is within the scope of the constitutional grant, which states only that “[t]o promote the Progress of Science and useful Arts,” the exclusive right to “Writings and Discoveries” may be secured for limited times to those who produce them. Art. I, § 8. Yet the patent statute is somewhat differently worded and is on its face open both to respondent’s construction and to the contrary reading given it by the Court. In the absence of legislative history on this issue, we are thrown back on policy and practice. Because I believe that the Court’s policy arguments are not convincing and that past practice favors the respondent, I would reject the narrow definition of “useful” and uphold the judgment of the Court of Customs and Patent Appeals (hereafter CCPA).

The Court’s opinion sets out about half a dozen reasons in support of its interpretation. Several of these arguments seem to me to have almost no force. For instance, it is suggested that “[ujntil the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation” (p. 534, ante) and “[i]t may engross a vast, unknown, and perhaps unknowable area” (p. 534, ante). I fail to see the relevance of these assertions; process claims are not disallowed because the products they produce may be of “vast” importance nor, in any event, does advance knowledge of a specific product use provide much safeguard on this score or fix “metes and bounds” precisely since a hundred more uses may be found after a patent is granted and greatly enhance its value.

The further argument that an established product use is part of “[t]he basic quid pro quo” (p. 534, ante) for the patent or is the requisite “successful conclusion” (p. 536, ante) of the inventor’s search appears to beg the very question whether the process is “useful” simply because it facilitates further research into possible product uses. The same infirmity seems to inhere in the Court’s argument that chemical products lacking immediate utility cannot be distinguished for present purposes from the processes which create them, that respondent appears to concede and the CCPA holds that the products are nonpatentable, and that therefore the processes are nonpatentable. Assuming that the two classes cannot be distinguished, a point not adequately considered in the briefs, and assuming further that the CCPA has firmly held such products non-patentable, this permits us to conclude only that the CCPA is wrong either as to the products or as to the processes and affords no basis for deciding whether both or neither should be patentable absent a specific product use.

More to the point, I think, are the Court’s remaining, prudential arguments against patentability: namely, that disclosure induced by allowing a patent is partly undercut by patent-application drafting techniques, that disclosure may occur without granting a patent, and that a patent will discourage others from inventing uses for the product. How far opaque drafting may lessen the public benefits resulting from the issuance of a patent is not shown by any evidence in this case but, more important, the argument operates against all patents and gives no reason for singling out the class involved here. The thought that these inventions may be more likely than most to be disclosed even if patents are not allowed may have more force; but while empirical study of the industry might reveal that chemical researchers would behave in this fashion, the abstractly logical choice for them seems to me to maintain secrecy until a product use can be discovered. As to discouraging the search by others for product uses, there is no doubt this risk exists but the price paid for any patent is that research on other uses or improvements may be hampered because the original patentee will reap much of the reward. From the standpoint of the public interest the Constitution seems to have resolved that choice in favor of patentability.

What I find most troubling about the result reached by the Court is the impact it may have on chemical research. Chemistry is a highly interrelated field and a tangible benefit for society may be the outcome of a number of different discoveries, one discovery building upon the next. To encourage one chemist or research facility to invent and disseminate new processes and products may be vital to progress, although the product or process be without “utility” as the Court defines the term, because that discovery permits someone else to take a further but perhaps less difficult step leading to a commercially useful item. In my view, our awareness in this age of the importance of achieving and publicizing basic research should lead this Court to resolve uncertainties in its favor and uphold the respondent’s position in this case.

This position is strengthened, I think, by what appears to have been the practice of the Patent Office during most of this century. While available proof is not conclusive, the commentators seem to be in agreement that until Application of Bremner, 37 C. C. P. A. (Pat.) 1032, 182 F. 2d 216, in 1950, chemical patent applications were commonly granted although no resulting end use was stated or the statement was in extremely broad terms. Taking this to be true, Bremner represented a deviation from established practice which the CCPA has now sought to remedy in part only to find that the Patent Office does not want to return to the beaten track. If usefulness was typically regarded as inherent during a long and prolific period of chemical research and development in this country, surely this is added reason why the Court’s result should not be adopted until Congress expressly mandates it, presumably on the basis of empirical data which this Court does not possess.

Fully recognizing that there is ample room for disagreement on this problem when, as here, it is reviewed in the abstract, I believe the decision below should be affirmed.

       The applicants described the products of their process as “2-methyl dihydrotestosterone derivatives and esters thereof as well as 2-methyl dihydrotestosterone derivatives having a C-17 lower alkyl group. The products of the process of the present invention have a useful high anabolic-androgenic ratio and are especially valuable for treatment of those ailments where anabolic or antiestro-genic effect together with a lesser androgenic effect is desired.”

       35 U. S. C. § 135 (1964 ed.) provides: “Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof .... The question of priority of invention shall be determined by a board of patent interferences . . . whose decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent Office of the claims involved, and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor. . . .”
      Patent Office Rule 204 (b), 37 CFR § 1.204 (b), provides: “When the filing date or effective filing date of an applicant is subsequent to the filing date of a patentee, the applicant, before an interference will be declared, shall file an affidavit that he made the invention in controversy in this country, before the filing date of the pat-entee . . . and, when required, the applicant shall file an affidavit . . . setting forth facts which would prima facie entitle him to an award of priority relative to the filing date of the patentee.”
      Judge Thurman Arnold has provided an irreverent description of the way patent claims, including “interferences,” are presented to the Patent Office. See Monsanto Chemical Co. v. Coe, 79 U. S. App. D. C. 155, 145 F. 2d 18.

       “A homologous series is a family of chemically related compounds, the composition of which varies from member to member by CH2 (one atom of carbon and two atoms of hydrogen). . . . Chemists knowing the properties of one member of a series would in general know what to expect in adjacent members.” Application of Henze, 37 C. C. P. A. (Pat.) 1009, 1014, 181 F. 2d 196, 200-201. See also In re Hass, 31 C. C. P. A. (Pat.) 895, 901, 141 F. 2d 122, 125; Application of Norris, 37 C. C. P. A. (Pat.) 876, 179 F. 2d 970; Application of Jones, 32 C. C. P. A. (Pat.) 1020, 149 F. 2d 501. With respect to the inferior predictability of steroid homologues, see, infra, p. 532.

       In addition to the clear conflict between the Patent Office and the CCPA, there arguably exists one between the CCPA and the Court of Appeals for the District of Columbia. See Petrocarbon

        Limited v. Watson, 101 U. S. App. D. C. 214, 247 F. 2d 800, cert. denied, 355 U. S. 955. But see Application of Szwarc, 50 C. C. P. A. (Pat.) 1571, 1576-1583, 319 F. 2d 277, 281-286.

       The present case is the first in which the Government has taken the position that § 1256 confers jurisdiction upon this Court to review patent decisions in the CCPA. Prior to Glidden Co. v. Zdanok, 370 U. S. 530, the Government was of the view that the Court lacked jurisdiction. See, e. g., the Brief in Opposition in Dalton v. Marzall, No. 87, O. T. 1951, cert. denied, 342 U. S. 818. After the decision in Glidden, discussed infra, at 526, the Government conceded the issue was a close one. See, e. g., Brief in Opposition in In re Gruschwitz, No. 579, O. T. 1963, cert. denied, 375 U. S. 967.

       We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. §7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

       Act of March 2, 1927, c. 273, §11, 44 Stat. 1335, 1336. See Glidden Co. v. Zdanok, supra, at 572-579; Kurland & Wolfson, Supreme Court Review of the Court of Customs and Patent Appeals, 18 Geo. Wash. L. Rev. 192 (1950). This remains the law. 35 U. S. C. §§ 141, 145.

       Act of March 2, 1929, c. 488, 45 Stat. 1475.

       See Kurland & Wolfson, op. cit. supra, n. 7, at 196.

       Apart from Postum, until enactment of § 1256 in 1948 there existed no statutory basis for jurisdiction in these eases. See Robertson & Kirkham, Jurisdiction of the Supreme Court of'the United States, §251 (Wolfson & Kurland ed. 1951).

       This is not to say that a CCPA determination that an applicant is entitled to a patent precludes a contrary result in a subsequent infringement suit, any more than issuance of a patent by the Patent Office or the decision in an earlier infringement action against a different “infringer” has that effect. See, e. g., Graham v. John Deere Co., ante, p. 1, at 4. We review decisions of the District Court under 35 U. S. C. § 145 although these are subject to the same measure of readjudication in infringement suits. See Hoover Co. v. Coe, 325 U. S. 79.

       Respondent and the amicus curiae take a different view than does the Government of precisely what the issue on the merits is. They argue that the issue of “patentability” is not properly before us, that the issue actually presented is whether the Primary Examiner in the Patent Office has authority under Rule 204 (b) himself to evaluate the sufficiency of affidavits submitted under that Rule.
      Both the Board of Appeals and the CCPA rejected this view and focused instead on the question of what averments satisfy the statutory requirement that a claimed chemical process be “useful.” We agree. First, the issue of “patentability” cannot be foreclosed by the circumstance that the Patent Office — which, according to counsel for respondent, processes some 1,800 claims and issues 700 patents each week — has already issued a patent to Ringold and Rosenkranz who asserted in their claim that their process yielded useful products. See note 1, supra. Second, there is no basis for the proposition that even where an applicant for an interference presents a claim which on its face is unpatentable, a complicated and frequently lengthy factual inquiry into priority of invention must 'inexorably take place. On the contrary, Rule 201 (a), 37 CFR § 1.201 (a), defines an interference proceeding as one involving “two or more parties claiming substantially the same patentable invention and may be instituted as soon as it is determined that common patentable subject matter is claimed . . . .” (Emphasis supplied.) See Application of Rogoff, 46 C. C. P. A. (Pat.) 733, 739, 261 F. 2d 601, 606: “The question as to patentability of claims to an applicant must be determined before any question of interference arises and claims otherwise unpatentable to an applicant cannot be allowed merely in order to set up an interference.” See also Wirkler v. Perkins, 44 C. C. P. A. (Pat.) 1005, 1008, 245 F. 2d 502, 504. Cf. Glass v. De Roo, 44 C. C. P. A. (Pat.) 723, 239 F. 2d 402.
      The current version of Rule 203 (a), 37 CFR § 1.203 (a), makes it explicit that the examiner, “[bjefore the declaration of interference,” must determine the patentability of the claim as to each party. See also Rule 237, 37 CFR § 1.237.

       See Act of April 10, 1790, c. 7, 1 Stat. 109; Act of Feb. 21, 1793, e. 11, 1 Stat. 318; Act of July 4, 1836, c. 357, 5 Stat. 117; Act of July 8, 1870, c. 230, 16 Stat. 198; Rev. Stat. §4886 (1874).

       35 U. S. C. § 101 (1964 ed.).

       Thus, in Application of Wilke, 50 C. C. P. A. (Pat.) 964, 314 F. 2d 558, the court reversed a Patent Office denial of a process claim, holding that 35 U. S. C. § 112 (1964 ed.) was satisfied even though the specification recited only the manner in which the process was to be used and not any use for the products thereby yielded. See also Application of Adams, 50 C. C. P. A. (Pat.) 1185, 316 F. 2d 476.
      In Application of Szwarc, 50 C. C. P. A. (Pat.) 1571, 319 F. 2d 277, the court acknowledged that its view of the law respecting utility of chemical processes had changed since Bremner. See generally, Note, The Utility Requirement in the Patent Law, 53 Geo. L. J. 154, 175-181 (1964).

       Respondent couches the issue in terms of whether the process yields a “known” product. We fail to see the relevance of the fact that the product is “known,” save to the extent that references to a compound in scientific literature suggest that it might be a subject of interest and possible investigation.

       In light of our disposition of the case, we express no view as to the patentability of a process whose sole demonstrated utility is to yield a product shown to inhibit the growth of tumors in laboratory animals. See Application of Hitchings, 52 C. C. P. A. (Pat.) 1141, 342 F. 2d 80; Application of Bergel, 48 C. C. P. A. (Pat.) 1102, 292 F. 2d 955; cf. Application of Dodson, 48 C. C. P. A. (Pat.) 1125, 292 F. 2d 943; Application of Krimmel, 48 C. C. P. A. (Pat.) 1116, 292 F. 2d 948. For a Patent Office view, see Marcus, The Patent Office and Pharmaceutical Invention, 47 J. Pat. Off. Soc. 669, 673-676 (1965).

       See n. 3, supra.

       See respondent’s letter requesting amendment, dated July 21, 1960, Record, pp. 20-23. See also Application of Adams, 50 C. C. P. A. (Pat.) 1185, 1190, 316 F. 2d 476, 479-480 (concurring-dissenting opinion). In the present case, the Board of Appeals found support in the Ringold article itself for the view that “minor changes in the structure of a steroid may produce profound changes in its biological activity.” Record, p. 52.

       Note on the Patent Laws, 3 Wheat. App. 13, 24. See also Justice Story’s decisions on circuit in Lowell v. Lewis, 15 Fed. Cas. 1018 (No. 8568) (C. C. D. Mass.), and Bedford v. Hunt, 3 Fed. Cas. 37 (No. 1217) (C. C. D. Mass.).

       “As a reward for inventions and to encourage their disclosure, the United States offers a seventeen-year monopoly to an inventor who refrains from keeping his invention a trade secret.” Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U. S. 471, 484.

       See Monsanto Chemical Co. v. Coe, 79 U. S. App. D. C. 155, 158-161, 145 F. 2d 18, 21-24.

       See, e. g., the decision below, 52 C. C. P. A. (Pat.), at 744, 333 F. 2d, at 237. See also Application of Bergel, 48 C. C. P. A. (Pat.), at 1105, 292 F. 2d, at 958. Cf. Application of Nelson, 47 C. C. P. A. (Pat.), at 1043-1044, 280 F. 2d, at 180-181; Application of Folkers, 52 C. C. P. A. (Pat.) 1269, 344 F. 2d 970.

       The committee reports which preceded enactment of the 1952 revision of the patent laws disclose no intention to create such a dichotomy, and in fact provide some evidence that the contrary was assumed. Sen. Rep. No. 1979, Committee on the Judiciary, 82d Cong., 2d Sess., 5, 17; H. R. Rep. No. 1923, Committee on the Judiciary, 82d Cong., 2d Sess., 6, 17. Cf. Hoxie, A Patent Attorney’s View, 47 J. Pat. Off. Soc. 630, 636 (1965).

         Application of Ruschig, 52 C. C. P. A. (Pat.) 1238, 1245, 343 F. 2d 965, 970 (Rich, J.). See also, Katz v. Horni Signal Mfg. Corp., 145 F. 2d 961 (C. A. 2d Cir.).

       The statute in pertinent part is set out in the Court’s opinion, p. 529, ante.

       Any concession by respondent would hardly be controlling on an issue of this general importance, but I am less clear than the Court that such a concession exists. See, e. g., Brief for Respondent, p. 53. As to the CCPA, it is quite true that that court purports in the very case under review and in others to distinguish product patents, although its actual practice may be somewhat less firm. See Application of Adams, 50 C. C. P. A. (Pat.) 1185, 316 F. 2d 476, Application of Nelson, 47 C. C. P. A. (Pat.) 1031, 280 F. 2d 172.

       See, e. g., the statement of a Patent Office Examiner-in-Chief: “Until recently it was also rather common to get patents on chemical compounds in cases where no use was indicated for the claimed compounds or in which a very broad indication or suggestion as to use was included in the application. [Bremner and another later ruling] . . . have put an end to this practice.” Wolft’e, Adequacy of Disclosure as Regards Specific Embodiment and Use of Invention, 41 J. Pat. Off. Soc. 61, 66 (1959). The Government’s brief in this case is in accord: “[I]t was apparently assumed by the Patent Office [prior to 1950] . . . that chemical compounds were necessarily useful . . . and that specific inquiry beyond the success of the process was therefore unnecessary . . . .” Brief for the Commissioner, p. 25. See also Cohen & Schwartz, Do Chemical Intermediates Have Patentable Utility? 29 Geo. Wash. L. Rev. 87, 91 (1960); Note, 53 Geo. L. J. 154, 183 (1964); 14 Am. U. L. Rev. 78 (1964).