Case: May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 
Outcome: referred to
Counsel for Sanofi-Aventis submitted that enabling disclosure, not mere disclosure, is required for anticipation, citing, most recently, Lindgren J in Alphapharm Pty Ltd [2008] FCA 559 at [160] [161] and the decision of the House of Lords in SmithKline Beecham (Paroxetine Methanesulfonate) Patent [2006] RPC 323. By way of introduction, it is worth remarking that the phrase "enabling disclosure" was brought to prominence by the speech of Lord Hoffmann in Biogen Inc v Medeva plc [1996] UKHL 18 ; [1997] RPC 1 , (1996) 36 IPR 438. That decision concerned the requirements for a valid patent under the 1997 United Kingdom Act (based upon the European Patent Convention) but did not concern the question of anticipation. The most important question was whether a later patent could claim an earlier priority date because it was "supported" by the earlier specification. That is a concept similar to, but narrower than, whether a later patent is fairly based upon an earlier specification in our law (cf F Hoffman-La Roche &amp; Co AG v Commissioner of Patents [1971] HCA 3 ; (1971) 123 CLR 529 ; CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 1168 ; (1994) 51 FCR 260 ; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274). It may be accepted that, in the case of a claim for a chemical compound by formula, in order to be valid, the specification would have to disclose how it might be manufactured (s 40). The phrase was also used in the speech of Lord Oliver in Asahi Kasei Kogyo KK's Application [1991] RPC 485 , to which I shall return. The phrase is reasonable shorthand in relation to the disclosure required for there to be anticipation of a process or method claim but, in my opinion, has little, if any, relevance to anticipation of a product claim or a claim for a chemical compound by formula. Indeed, it is apt to mislead in relation to the latter. For a product claim, the novelty must lie in the product not the means of producing it ( May &amp; Baker Ltd v Boots Pure Drug Co Ltd (1948) 65 RPC 255 at 281 282). By the same token, a new process to obtain an old product will have novelty. 64 Something was sought to be made of the fact that PCR 4099 or derivative 1 was not unmistakably pointed to as the best of the compounds. There was competing evidence from the experts related to that question. In my view, that was a red herring as far as novelty is concerned. On any view, it was expressly disclosed as one of the most promising of the compounds. The invention was not limited to the most effective or most promising example. The invention was a broad class. As Lord Hoffmann lucidly explained in Biogen Inc [1996] UKHL 18 ; [1997] RPC 1 at 48 49, 36 IPR 438 at 455: "If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them. Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect: see May &amp; Baker Ltd v Boots Pure Drug Co Ltd [1950] RPC 23 at 50. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them." 77 The first case in the United Kingdom Court of Appeal to consider selection patents was In the matter of Esso Research and Engineering Co's Application (Shell) [1960] RPC 35 where the principle was explained as follows ([1960] RPC 35 at 53): "So it is that you may have first the scientist who discovers and discloses the whole range and who may obtain patent protection for the subject-matter of his discovery or the means of manufacturing them what Maugham, J. called the "originating patent". But within such a range there is room also for the second scientist whose researches may discover and disclose that certain of the items or a section of them have advantages peculiar to themselves, hitherto unknown; and, if so, then there would appear to be no ground on reason or principle why patent protection should not be, in proper cases, available to the second scientist." (See also Institut Francais du Petrole des Carburants et Lubricants' Application, Re [1972] FSR 147, [1972] RPC 364; May &amp; Baker Ltd (1948) 65 RPC 255.)