*1 965 Considering aspects of this case motions, presented on these record parties possible. recovery is not genuine agree issue as to nois trial, neither seeks material fact and plaintiff demonstrate nor does prove more a trial at be able pre- record herein
than is shown plaintiff’s Consequently, motion sented. denied, summary judgment should be granted, and
defendant’s cross-motion plaintiff’s petition dismissed. George Chicago, 111., Frost, Henry E. Foster, Eugene City, W. ter, York New Bet- Kekich, Kalamazoo, Mich.,
John appellants. Moore, Washington,
Clarence W. D. C. (Joseph Schimmel, Washington, C.,D. counsel), for the Commissioner Pat- ents. WORLEY, Judge, Before Chief RICH, MARTIN, SMITH, RUSCHIG,
Application Heinrich Walter ALMOND, Judges. muller, Korger, Hans Au Gerhard Wagner, Alfred Josef Scholz RICH, Judge. Bänder. appeal This is from the decision of the Appeal No. 7254. Patent Appeals affirming Patent OfficeBoard Court Customs United States the examiner’s of claims 1-6 Appeals. Patent application 601,- and 8-13 of No. serial April July 31, 1956, filed for a Sulfonyl “New Benzene Ureas Proc- appealed Preparation.” ess their All compounds. claims are directed to appeal examiner the board onwas claims 1-13 in his answer but be- said, “upon fore the board the examiner reconsideration claim is deemed allow- able.”
The board’s recites the fact claims, that there 25, 19- were other 17 and “non-eleeted” referred to process herein, claims “directed to the lowering sugar in the treatment of, of diabetes oral administration pharmaceutical containing, and to compounds tablets substantially recited 1, 2, compound claims same manner as in (our emphasis) and 13” that the required examiner restriction as between ap- those here on the claims peal, as a “A result of which divisional containing application and 19 as claims 1 to thereof *2 pending.”1 position filed and is see rele- We have marked the “4” of the vancy chlorine, of para facts to the “p” issue which is also the or patentability position. interesting compare the claims to the com- It is to before us but recite them because this with allowed which reads: board, possibly examiner, compound 7. The of the formula certainly solicitor for the Patent Of- fice seem to have had them in mind in stating rejection, their reasons for appear.
will to discussion useful in this will It The Invention nomenclature in mind the basic bear The invention here is more than the They are as the above. such making of new ab- sulfonyl general ureas. class stract. The field endeavor in which sulfonyl group Urea is the -S02-. pro- the claimed invention is found is the compounds are and these NH2-CO-NH2 duction of an oral medication for the con- noted ureas. It will be substituted mellitus, type trol of diabetes the common (nitrogen) atoms two N urea has long by daily injec- of diabetes treated products distinguish them in substitution known, tions As is well insulin. conventionally they referred characteristic of the is an abnor- disease refer will hereafter N and N'. We sugar mal amount of due sulfonyl group bearing nitrogen atom deficiency. insulin it will be seen In claims as N. the above (hydrogen) atoms at- H that one of the practical disadvantages The obvious replaced or substi- has been tached N hypodermically injected gave insulin chlorobenzene-sulfonyl by tuted develop rise research discover and above, group. one of In claim place an oral medication to take its hydrogens sub- has been attached to N' as a result of this research of recent H7, propyl group stituted years -C3 pharmaceuticals a few alkyl having 3 carbon atoms. have become available. One them “Orinase,” sold under the trademark substituted claim 7 the same H has been descriptive which has the name tolbu- by radical, cyclohexy- cycloalkylalkyl N-(4-methyl-benzenesul- tamide2 and is methyl, methylene attached to -CH2- fonyl)-N'-n-butyl urea. Another de- hexagon containing representing “H” veloped approved marketing later and ring, cyclohexyl not to -C6Hu Drug the Federal Food and Adminis- ring. confused with the benzene Thus tration in November is sold under always group -NH-CTO- there is the urea “Diabinese,” the trademark which has benzene-sulfonyl NH-, preceded by the descriptive chlorpropamide name ring may group, on the of which there (4-chloro-benzenesulfonyl) N- -N'-n- be one or additional substituents more propyl urea. This is the sub- C1-, like and followed an N'-substitu- ject appeal matter claim on application designated ent. at bar where it is ( onyl) pro- “N- P-chloro-benzenesulf -N'- 13, above, Claims and two of ten pylurea,” graphic formula of which is species application, being generic (claims
other claims 1 and 2) subgeneric (claims 9). 8 and Of the broad claims the board selected claim application 1. Appellants’ This record here 2. brief states this was nothing developments we know more about it. another of their and that patent 2,968,158 have obtained S.U. thereon, not of record. analysis pat- particular man- purposes of its 2 for not, however, Appellants entability ner. issue. reads: recognize necessity this con- Benzenesulphonylureas for- junction mula pat- presented seek a compounds per *3 on se. [Em- ent the phasis ours.] grasp We confess a to what the\ failure observation, by examiner intended that alkyl of 2 is and wherein R is chlorine R2 part made as of his insistence the to 7 carbon atoms. they compounds unpatentable are because broadest, generic to Claim 1 is the art, would from un- be obvious the / defining a limited species still claimed but 103, der it 35 U.S.C. unless be that § class, and reads: it applicants his view are entitled treating process claims for a of diabetes. V Compounds from the selected 1. Would a claims of what' statement the consisting group (1) benzenesul- compounds are for the useful convert phonyl formula ureas the compounds into claims to which them less obvious? is the says obvious, examiner the/ the claims, and the' presume would fact pounds paragraph board’s reference erence F.2d question fore the wherein consisting bromine, kenyl-, cycloalkyl- and basic of chlorine kyl selected of 2 to 7 carbon The board pounds The claims are directed following them, go atoms in law be in these into. CCPA “without addition salts observation board: adverts the claims on though to a use 32 CCPA R is selected from patentability, methyl statement put consisting See [sic] and bromine not to the it would hydrogen, limitation,” examiner’s atoms selected and in a and “limitation,” re group appeal define com- from the methoxy, thereof. emphasis Thuau, lack of In re compound claim (2) use of these cycloalkylal- stimulated not seem alkyl-, consisting and Perhaps non-toxic chlorine, answer be- concluding Jones, which we [3] any ref- group we need ato R2 Ri from com- on the on the al- F.2d use place of this invention in the useful claims define. neric and nine affidavits of record. tion and further covered millions. Those lants, tensive, general Patent áre search, ticularly glycemic activity), enting erties such To tests, periments on animals produce blood extensively level useful As has been demonstrated use. We return to our consideration compounds, as they possess Office have been discovered class of sugar a result of their because of blood specification: specific claims, have possess substantial products of the invention admits treating diabetes, presumably level. described a sulfonylureas, quote singled expounded in of other desirable particular sugar as for which reason They in connection may relevant lowering out here ability (known in the systematic, have been dis- number may defined expensive fall in clinical five which the be used specifica- to lower passages into the for appel- hypo- prop- ex- arts, they par- pat- ge- ex- corresponding of the latter term “atoms” use description broad 3. The to be inadvert- appear stands in claim says that specification R2 radicals, error. rather ent named the various salts, distinguished, as such or in the form of their ent invention are presence hand, they or in substances that are more re- * * * oxidising salt formation. sistant to external cause These influ- sugar ences, atmospheric oxygen, salts same low- have the blood * * * ering properties. importance which is their alia, handling, and, up, can be made inter shelf-life preparations other, into suitable in that bacterio- lowering administration static action. sugar blood in the treatment of dia- Furthermore, the new betes. secondary produce do not effects canal are similar to exhibits beings, lyl sorption tions than in rabbits. similar constitution of the * * * dogs *4 strated, guinea pigs, rabbits, As [******] animal tests the In [******] series ***** has the compared sugar testing and that the blood for conditions in the smaller example, level has advantage with individual varia- those cats compounds action ** of alimentary mice, rats, sugar of human sulphani- demon- the * pres- dogs. level of tration, the butyl-urea, species cific N lasting. poglycemic activity giving duction showing flora of the Together gland, nor the es (Heinz - dog compounds (4-chloro-benzenesulfonyl) caused sulphonamides the claims 3 and at various produced the To bodies) or on the included two specific with by showing being lowering illustrate, alimentary claim 3 action digestive in rabbits periods blood claimed, general on the bacterial of blood compound, on the blood at tables, sugar after tract. disturbanc- least, by figures statements the thyroid - sugar the first adminis- level ten N' * * are: second long spe- - hy- for re- n- of sugar lowering.............. level 27 40 40 32 15 0 %
after stated 1 3 24 hours ................... by Dumas, An of affidavit record Dr. from 2 chlorpropa- to 14 months with mide it was Director of successful of Clinical Chas. Research 79% cases, Co., Inc., in a number of Pfizer & the “Di- which the which sells disease (chlorpropamide) poorly by was either abinese” of controlled tolbuta- secondary mide or in which claim as the which the same oc- failure curred, patient originally except that is had instead carbon) butyl (4 propyl with treated radical it has a tolbutamide and sub- sequently (3 radical, by unresponsive carbon) became indicates refer- drug. published ence clinical studies4 that chlorpropamide explained why signifi- some- here claimed It should be it is advantages that, specification states, times has over tolbutamide cant as the su- patients pra, (“Orinase”) in that human who do not have responsiveness action, lost to tolbutamide were bacteriostatic the inhibition of managed satisfactorily chlorpropa- growth bacteria, with also herein “sulfa-drug mide in studied and that 84 cases termed action.” Such action 62% group present closely treated for another 118 cases in a related anti-dia- Sugar, M.D., Pennock, M.D., 4. Article Samuel J. N. et L. article L. Pennsylvania Medicine al. in AMA Archives of Internal Medical Journal for Octo- 360-364; 1959, pages ber, September, 1959, pages 1537-1539. pharmaceutical [N-(4-aminoben- conducts research drug “BZ-55,” betic working urea, laboratories, vast field zenesulfonyl)-N'-n-butyl also sulfonylurea compounds pur- -n-butylcarba- -sulfanilyl-N2 named Ni finding developing improved pro- pose disadvantage mide], drug medications, diabetic, oral diabetic control must have who duces delimiting preparing continuously, therapy strains succeeded in bacteria sulfonylureas, pre- sulfa-drug ther- restricted resistant recognized pared type medically as dis- of a known to apy. reactions This is art, materials, suppression intes- known which have advantageous, between as is necessary properties, di- to the the desirable flora which interferes tinal lowering purpose, (1) gestive the level process. sugar, (2) nontoxicity, (3) invention, ap- To summarize “sulfa-drug” (4) Korger, action, Aumiiller, Ruschig, pellants bacteriostatic ability action, (5) Bander, assignors prolonged Wagner, to con- Scholz AG, in- trol diabetics who have shown firm Hoechst vor- of Farbwerke Briining adequate response quite similar to other at Frank- mals Lucius & Meister drugs. Germany, Republic urt/Main, f Federal Claims Tabulated relatively sulfonylureas in number. First we will claimed are few
list those *5 N'
N-benzene Substituent Claim Substitutent -benzenesulfonyl -n-butyl urea 4-chloro 3 -n-butyl 4i ii 3-chloro 4 -n-butyl it 4-bromo it -5 -cyclohexyl it it 4-chloro 6 -cyclohexylmethyl (7) Si it 4-chloro ail’d. -isobutyi 3-chloro-4-methyI it ii 10 -n-butyl 3-chloro-4-methyl ii U 11 -n-butyl 6-chloro-2-methyl it 12 -propyl 4-chloro it it 13 generic subgeneric may thus: be summarized cy- alkyl, alkenyl, 1 chloro cyclo- cloalkyl, or with which there bromo may methyl alkylalkyl; or a be a methoxy 2-7 carbon another atoms chloro or bromo alkyl, po- any carbon it 2 a chloro 2-7 ring atoms sition on the alkyl, carbon ii both chloro 2-7 methyl positions -in atoms ring (cid:127)on the -butyl it as claim [same 8] 2, seen, appearing in first For reason Claim it be is even will narrow- subgeneric column, specific 9 as than treat claim er taken collec- tively
though appears position except to been treated it have that, neglect- parties specific; Appellants includes more as it -chloro. state ing compound. isomers, only compounds. it covers six than one 9, certainly Claim and claim are like- abstraction? And also evident quite scope. patent system wise of limited Claim 1 that a must related to greater scope spe- not mueh the world to commerce rather than collectively, philosophy? cific claims taken is in ac- realm cord with the broad statement of in- thinking The most recent on these specification appears vention in the problems to come to our attention —which generic to tous such a claim as say has not to a little about our recent would be drafted to include entitled, decisions —is “Is 35 U.S.C. § species disclosed and obvious variants Applicable Compounds ?,” by to Chemical require- to thereof meet the Patent Office Wayne Western, IDEA, Marion Vol. generic ment for a claim. Rule 141. See 1964, published Patent, No. Fall any event, this is the of com- Copyright Trademark Institute having proper- disclosed George Washington University, pag- ties above referred to as to be useful so es 443-454. as an oral anti-diabetic medication. not have the freedom leaving our Before discussion of the speculate author to to section as whether invention, we make observation that applicable to claimed chemical character, a case of this chemists do compounds, Congress told us merely puddle about in their labora- it-is; duty apply and it it as is our so making tories new carry congres- out the fundamental competent possibly make, chemist could intent, expressed sional in the Constitu- given making purpose them. Congress, pat- tional mandate to make They proceed according plan to some progress adapted promote ent laws having compounds they made new still the useful arts. This often a difficult laboriously biologi- to test out their task; Congress points general direc- properties mice, rats, dogs, cal rabbits, application tion and leaves the detailed humans, order locate those problems to us. Our solution therapeutic use to mankind Patent Of- should be terms that principle, and to determine if fice, bar, and other courts can under- *6 one, classification, or the if appear stand and which also to make one, utility. there is related to that We logical practical legal as and well quite that aware such situations specifically sense. To that task we now always ques- philosophical the apply Hopefully, it will also ourselves. tion, susceptible of various theoretical biologists, chemists, make and sense just answers, of who invented what? Is pharmacologists. compounds, the “invention” in the new utility, the determination of their or in Rejection The according pill pill- made to known making techniques? rely Or is in the ad- The examiner and the board on ministering swallowing pill references, patents or the the ? three issued to the Geigy A.G., Basel, Is it not self-evident firm of R. that the “invention” J. Switzer- legal in such is in the cases nature land: 2,371,178 13, Martin et al. U. S. Mar. 1945 120,428 16, Swedish Patent Dec. 1947 5 919,464 25, French Patent Nov. give patent granted
5. The examiner and board cation. The was 25 Nov. patent published ac- date Dec. 1946 and 10 March 1947. We cording merely accuracy. state this translation of record that No one filing appli- French has was date of the made a of it. bearing case, down handed on this was explained However, the examiner therefore, was, March It es- Geigy (French Patent) teaches “The con- considered the examiner but was sentially subject matter as the same board, sidered to the extent agreed Patent,” the board Swedish facts, summarily distinguishing it on its except duplicates two are “substantial suggests in ten The also lines. solicitor patent two exam- the Swedish Papesch factually distin- that the case is patent” said ples the French guishable from the situation here. “Only patent discussed French will be study has been our of this reference outset, states at the (We have with the French text.” argument solicitor in his oral record.) English translation of its “significant history,” said it is that claim references, solicitor, naming after interference, 3 was count in No. any fur- make “no need is seen to said 89,009, and claim was the count pat- ther reference here to Swedish interference, 89,010,6 another No. both ent,” examples of the The two added having interferences been dissolved relied on. are not Swedish on on the the examiner his own motion effect, therefore, we are concerned ground unpatentability the ref- over patents, which of but two disclosures used here. is of inter- erences While this Martin shall refer as the we est, fail to see that it has bear- patents. French ing patentability on us before issue rejection, on Feb- except emphasize importance The examiner’s final 13, 1962, ruary possible claims 1-5 effect of this decision on Martin, “unpatentable appellants. over” 8-13 were others than the in- does “unpatentable cidentally explain presence each over” in our patents, (from and claims French Swedish record of Dr. Dumas’ affidavit “unpatentable French 89,010) over” the 6-7 were No. Interference and other inter- said, reiterate,” “the patent. papers. “To ference interferences are Since n clearly up only applications deemed set allowable ordinary (Rule 203), one of skill obvious to it would also indicate that must have con- art.” at one time examiner patentable, sidered 3 and to be answer before The examiner’s 1961) July 20, subsequent (on to which said, “upon board, August 14,1962, re- new were cited in- fourteen references allow- claim is deemed consideration cluding three on here. This relied able,” ex- stated. The reason may interesting who to those be more expressly also withdrew aminer us. know the situation it is to Martin, jection no rea- of claims 8-12 *7 sense, however, partici- we are that Swedish son stated. added the He larger pating in but one of a much scene rejection This patent 6. of claim to the drama. reported in the left the situation as April 30, opinion, 1963: solicitor, board on the examiner and The rejected and on Martin 1-5 and 13 hand, took somewhat more restrict- rejected French on the 1-6 and 8-13 ground ed view patent. Swedish Geigy company’s patents did board, our de- on the other because hand. The examiner the dates We mention 381, ap- Papesch, F.2d restricted himself to in In re 315 the view cision pellants’ unpat- 1084, compounds has think are which we 50 CCPA party interference, was 13 now dis- claim other record shows that 6. The solved, appellants suggested ,to 203 McLamore of under Eule was William M. 25, 1957, party July and was Pfizer Co. Another action of Chas. in an office 25, September later, Marshall them on added Frederick J. made was why Sigal, explains .probably Dec. claim Max V. 2, 1959, was dissolved out This 1957. specific any correspond dis- before the interference 13 does 20, example appellants’ application. The solved on June 1960. 972 Petering,” entable because are obvious re and 2 under claims 1 read on the section 103. unpatentable solicitor took art and same want
view, up novelty 102, though which summed his brief as under 35 U.S.C. § follows: the board made to that sec- -reference Petering, tion of the In statute. how- “Clearly, compounds then the de- ever, did, resting expressly rejec- we by subgeneric fined claim 2 are obvi- ground 102(b) tion on section on the ous as in view of the disclosure was such that it described French disclosure. sole “Following In In claimed. issue, then, whether Petering,” the re of the board to intent
pounds are mean- obvious within the rely on section 102 seems clear. ing 103, of 35 USC as that term in that section of the statute has been In this situation have two we interpreted by in In re this Court with, anticipa different issues to deal Papesch, 1084, 50 CCPA F.2d 315 tion under 102 and obviousness section 381, USPQ 43; Petering, 137 In re keep section To under matters supra 993, 676, CCPA F.2d [49 301 clear, separately. we shall deal them USPQ Lambooy, 275], 133 and In re 133 Opinion CCPA F.2d USPQ 270.” Notwithstanding two statements position, however, goes The board be- just quoted, appel- the board counsel yond beyofid examiner, that of the statements, lants made three in their both argue what the solicitor in this chose argument, brief and at court, opinion makes fol- Patent Office not controverted lowing statement: which we find accord with the record. They are: specific examples exemplify-
“If ing any generic specific example “There is no disclosure [of making any compound to, patent] French are looked reference possible quite within even combinations the broadest sought.” small and include several by appellants disclosed “There is no disclosure in refer- scope of claims 1 and 2. Follow- sugar lowering ence of blood action ing Petering, F.2d In re [301 any compound said to have USPQ 993], 275, these CCPA sugar lowering action.” claims can be said be antici- even “No reference contains a util- pated.” [Emphasis ours.] ity any sort, disclosure or states that Speaking patent, of the Martin any particular compound includes statement: any particular utility.” mak- “Thus there are disclosed the regard statement, last ing of several quote say will what references about scope claims 1 [within?] from will which it seen 3 to 5 and over which claims very general. the disclosures are Mar- *8 [Em- obvious.” 13 are considered sulphonamide tin refers to “valuable phasis ours.] derivatives” and contains the statement say sulphonamide art that “The claimed that are new de- To appealed remarkably scope of” claims is rivatives “within suitable say “anticipated” therapeutical purposes.” to that claims are Each those board, therefore, appears compound four or to have claims ends and the “Following “being position that, phrase, In with the a colorless taken Dictionary (5th per “Therapeutic” New 7th ods.” Gould’s Medical Webster’s says: “therapeutics. Dictionary, ed.), Collegiate “of The branch of means or dealing lating science of disease medical with the treat- to treatment by agents or meth- ment disease.” remedial disorders » through developed covered, out, pound therapeutical properties. found research, particular substi- (Perhaps had is a that is what the examiner having necessity hypo- benzenesulfonyl tuted ureas mind in his reference “the glycemic conjunction utility prod- activity antibacterial without claims,” non-toxic, did, activity so that in the if he fail uct we and which are it.8) pass- they superior properties as oral anti- see the We note have ing are, They perforce, drugs. that claimed diabetic these Martin, said to unidentified “thera- the afore- have in which chemical peutical” suitability sulfonyl properties are all inhere. said useful ureas, urethanes, not not in the is, has not been ar- Certain and it it sug- appellants. class claimed is gued contrary, this invention gested by appellants perhaps they at in reference. even hinted drug activity, “sulfa” antibacterial have has re- Nevertheless the Patent Office they since contain the amino-benzene- (which, fused a on this invention sulfonyl-NH-structural unit of sulfanila- utility indeed, “conjunction of drug, early mide, “sulfa” is the an product,” though as new com- activity appellants specifically wish to biologi- desired found to have the drugs. avoid in oral anti-diabetic effect) and the cal the examiner because (and corresponding The French Swed- up- thought compounds, looked board ish) patent formulae, contains “basket” state- on as mere chemical have ment of as follows: board, “Following obvious; and the additionally thought Petering,” In re making procedure said [for “The “anticipated.” 2 would be general
N-substituted ureas] applications products and furnishes Rejection Anticipation The Board’s Own preparation utilizable for the of aux- shall the board’s We first consider view iliary products in the indus- textile “anticipated.” of claims 1 and 2 as try, disinfectants, preservatives, quite it clear what makes agents antiparasite such for exam- “Following expression In meant ple as anti-mite Swedish [moth quoted Petering” passage supra, re in the again patent] products, prod- namely, specific illustrative take plasticizers ucts can used patent, examples dissect of the French lacquer industry, in' R2, R1, R3 them into chemical their industry. synthetic plastics Some components, those com and reassemble therapeutic these materials ponents possible combinations in all properties or can be used combination, see thus whether industry products.” as intermediate appealed synthesized, falls “Following agree appellants’ game with This is called statement claim. Petering,” In is. But we “There is no indication which of the re and that disagree [meaning possible at our endless least board since view 130] products Petering possible In not be have which re should fol Petering uses.” lowed in this case because very special volved a situation concept appellants’ invention, Our comparable do not to the situ consider gathered specification from their and the ation at bar. surrounding supporting from evidence history, prosecution Petering to our central we came the conclusion thinking. appellants invented, 6,7, -dimethyl- compound, dis- What that a attorneys fully 8. We are aware that write often Where the balance of including compound, true in statement identifies the as is both *9 instances, property, general spe- inherent, property inherent some or and the cific, example for the of add we fail such statements to see that just quoted patent from, anything or the Martin definition of the to the claim patent quoted compound. Karrer claims of the the named opinion Petering in in our the case. - - - monohydroxyethyl] isolloxazine, 9 [6 mechanistic dissection and recombination components in four named claim 10 and included illustra rejection other every of the which we tive chemical refer affirmed, actually containing them, hindsight was described in the ence to create patent by anticipations guidance Karrer of reference reason with of particular patent applicant’s disclosures, theory disclosure of that which on recognized by we felt would ordinary such be those reconstructed disclosures describe description specific compounds meaning skill in the art as a within the class, Furthermore, some 20 in limited section dowe not very present find type members which were similar case Petering. to one we another in structure and had before us in Even if possessed properties. examples which the same we take the French three-ring isoalloxazines, examples reference, The class was compounds of the Swedish were, apart them on which take recombine into them class, substituents, named, small different variable three those Y, Z, get recognizable and R. But Z we do not both Y and a small were class only hy- properties. with parently ap limited to variation drogen common as between We would methyl giving get (H) (CHS), patent from the French some possible H,H; the four and from combinations Swedish 156 com pounds. H,CH3; C3,H; CH3,CH3. doing R in And this we not dealing every hydroxyalkyl closely with case was radical related units as might length vary hydroxyalkyl the H and components and the from five CH3 Petering -CH2(CH0H)4CH20H, a to- but with such -CH2OH widely only differing p-acylami- tal of being R1 five members series of that choices nobenzene, descrip- diphenyl, (3-naphthalene included in the small class tion, disregarding dimethylbenzene, to isomerism. The four name a from few possible possible thirteen Y and Z combinations times choices.. And for the hydroxyalkyl possibilities R3 five choices there are such made a diverse radicals ethyl, possible dodecyl, benzyl, compounds. a-naphthyl. total of 20 Further- more, apply Petering will type We analysis attributed the vita- activity min these such a situation. We there disagree presence hydroxyalkyl of a R fore radical at the view the board (which activity us) urged and showed that the vitamin was solicitor has not hydro- same Y Z claims 1 whether and were and “can even be said to gen methyl. anticipated.” con- On note We facts originated cluded: seems to its use of Peter ing. Although specifically the examiner opinion “It is our skilled in considered that case another would, reading this art the Kar- appellants it, for cited his patent, envisage rer at once each comment about it was that it “not class, member of this limited even controlling.” deemed alsoWe note that though might person this skilled gave the board no indication that it in at once define in his mind formal ground tended to a new make boundaries of the class as we have (under example, pursu section done here.” ant ground 196(b)) to Rule different from the put great emphasis We in that relied on the examiner which on the total circumstances in the case obviousness, was limited to a section 103 “including such factors as the limited rejection. R, only number variations for two al- Z, for Y ternatives no alternatives hold We similar views as to the board’s ring positions, large other and a specific description that a indication unchanging parent structural nucleus.” compounds within claims 1 and 2 can be Petering opinion out of did made the Martin not intend our disclosure. To p-chloro- precedent the board selects decision to become *10 subject (as appellants’ matter as p-fromo- art such that the R used in for * * * isoamyl ethyl 2, supra) for been obvious a whole have ordinary person having facto, create, post skill four undis- to a ex toR2 ” * * * pos- specific compounds out of a art 35 U.S.C. § closed according ap- appellants’ sible parently To make most favorable out the case This is valid calculations. Office, struc- in which the the Patent description we found the kind of appealed tural between differences Petering and do not find here prior small as art are as claims and the patent “anticipation” Martin compari- possible, solicitor takes claims 1 and 2. compound appellants’ claims son a claimed) (not specifically 1- Rejection The Obviousness Dr_ Dorzbach, he finds the affidavit orig- pharmacological on tests vari- who made This leaves for consideration the Using appellants. inal on ous examiner’s of all claims numbering, unpatentable calls this appeal over the refer- the affidavit compares compound “(2)” and first because of As to this ences obviousness. compound “(7)”, rejection, we,proceed from the affi- also on the with correlative examples appellants’ postulate he then adds davit. 8, 9, these that none claimed To and, patent prior and 10 of French art numbering, we name these with the same basis that the Patent Officecontends that (our empha- subject follows between five sis) “differences mat- sought patented prior ter to be : (claimed)
(2) N-(4-chloro-benzenesulfonyl)-N'-ei%Zurea (affidavit) (7) N-(4-chloro-benzenesulfonyl)-N-mei%Zurea art) (prior (8) N-(4-chloro-benzenesulfonyl)-N/-6ewz2/Zurea “ “ (9) N-(4-meíA2/Z-benzenesulfonyl)-N/-2>fee?z-2/Zurea “ “ N-(4-mef%Z-benzenesulfonyl)-N'-dodec2/Zurea (10) varying reasons, brief none of the above and thus the solicitor’s For compounds (2), pains listed, is with- took some lists it. The solicitor other argument (7) appellants’ out that because at the claims: (8) pat- carbon, (7) N'-methyl be- French is not to found in the N'-benzyl excluded, (9) from it for want because ent and is not derivable cause pro- require that would or bromoben- disclosed reactant the claims chloro- Though N'-methyl. (7) is not group is none and also be- duce an zene and there case, (10) statutory excluded, “prior N'-phenyl be- in this it illus- art” cause Compound (2), important or bromoben- an fact. there is no chloro- trates cause having N'-dodecyl excluded, claimed, tests rab- zene was shown (blood sugar carbons, hypoglycemic limit 7. Some bits to distinguish though activity, much lowering) not as differences which higher homolog N'-bu- as the second (7), Compound tyl ethyl. may appear instead small but art having N'-methyl, homolog, next lower significant. to have was found Dr. Dorzbach unique posi- Compound occupies (7) activity. hypoglycemic note And we here it is from an have noted that tion. We compound which is the same That indicates that affidavit. affidavit having N'-propyl, except intermediate not; from but it is it is the French series, ethyl butyl in described simply enough the affidavit was in error in claim is effective assumption as “Diabinese.” lists it as a “known” market *11 admissions, pounds formula, that, by his-own R-benzenesul- We think fonyl-R'-urea (to right paraphrase to the exam- the solicitor does not have the rely prior p-chloro p-bromo compound iner) (7) as art but R on where is according ethyl- isoamyl, no R' to our it would make is or would views aforesaid, though if on fall difference He it within the claims he could. relies homologue” compounds no a “next lower of claimed are shown in Martin. beginning compounds appellants to is have shown This reference from end unexpected advantageous properties compounds it concerned with R wherein is nitrogen-containing para posi- possess. does not next is on a His reliance in “analogous compound (8) tion, p-nitro (N02), p-amino (NH2), as one to or compounds, scope 1, p-acetylamino (CH3-CO-NH), all out- cyclo- appellants’ is a side where substituent claims. The R2 group,” com- shows the reference to such how to convert amino nitro to catalytic acetylamino in as those named claim 6 and al- reduction and to by hydrogenation. is lowed claim 7 where N' substituent amino AH cyclohexyl cyclohexyl-methyl, examples up with, end and all cyclo-alkyl, substituents, to, compounds. saturated are directed amino not unsaturated substituents. aromatic processes One is to Martin’s cause analogy close, general; The is in not sulphonamides “salts series, of the benzene shows, record here to p-position which contain in the N'-cyclo- except identical that one has nitrogen-containing group or a substitu- hexyl N'-phenyl (compound other replaceable by group, ent such a to react (9) supra), very high that the latter has capable with carbonic acid derivatives toxicity wholly as to so be as a unusable (Emphasis ours.) reaction.” ples As exam- drug hypogly- whereas the former has sulfonamides, may salts of which activity (We cemic and is non-toxic. used, among be he includes four named compound have found no test of record “p-chloro- salts or bromobenzene sul- (8). nothing specific know phonamide.” is this disclosure which properties.) appears Patent relies on. This Office place any partic- solicitor The does not record before us to anom- be beyond ular (10) reliance on alous disclosure for the reason that Mar- displaying Notwithstanding its formula. expressly states, twice, tin that wants its structural similarities claimed para position a substituent in the compounds, upon the evidence-is that test placeable by nitrogen-containing group proved hypoglycemic it to no activ- one, proofs if show, it is not and the ity at all. expressly admitted, what the examiner p-chloro p-bromo cannot be Summarizing con- French and Swed- nitrogen-containing group, verted to a patents, position ish Patent Office any “by processes of the known they available disclose which are art.” The felt this homologs examiner analogous appellants’ to fact was immaterial so did board. compounds, ob- wherefore the latter are Strictly speaking, perhaps is; it but we vious. At the same it is time admitted trying think one skilled-in the art to fol- that these references “not teach processes prod- low Martin’s to obtain his any property have the likely p-ehloro- would ucts not be lowering use sugar,” quote or bromobenzene sulfonamide salts. board. did Martin not in 24 reactions urges appel- so Patent Office he describes. though compounds, lants’ not named Summarizing patent, patent, on the Martin Martin would be obvious description, therefrom, no disclosure it insofar as defined appellants’ and, position of fortiori, claims 1-5 13. That is based description proper- enough the contention that there of their processes at most ties but disclosures Martin teach one how make distinguish attempt this case from might made. of them which some record, Papesch. As it is board-said we understand : art contended that those skilled is not considered situation here “The to make know how same, particular, Appellants’ specification compounds. *12 pointed are no com- out that there gen- says, compounds of above “The the allegations, parative tests, or even by made formula in claim are [as 1] eral compounds of reference that the the making sulphonyl- known for methods used basis of the disclosure, there- ureas.” The Martin fore, possess property involved, nor the compounds appellants’ is no closer to Papesch dis- did the in reference variety homolog adjacent or an than a next by uses of disclosed close the analogous compound and con- would be here, the it did not fact reference prop- tains no more information about report any biological dis- tests compounds of it does disclose erties the any use.” close patents. than the French or Swedish identify positively We cannot what the references, solicitor, As to when the board had in mind as the they argument con- asked at oral whether rejection” “used of but if as the basis help anything tained that would those the solicitor we look to selected replied, diabetes, I treatment “No. for inclusion in his brief as the closest unhesitatingly say no.” prior art, board would seem to be in the saying compara- no were error years For a score a consistent line no tests and that there is evidence tive they this court decisions has emanated from possess property in- “do not refusing rejections in sit- to sustain fact * * discussed above volved essentially In that here. uations passage like comparative which do show that the tests quoted solici- from the above pos- prior compounds relied on do not art correctly that tor’s brief stated properties in- be an we find"to sess the propound- is obviousness we have issue If, tegral appellants’ part of invention. in the Lam- that issue ed the nature referring perchance, board is Petering, booy, Papesch cases. appealed claims within the Papesch that we tried to make clear which able to reconstruct it was term “obvious” our the use references, examples our dissected history section whose in section rejected approach is that we answer shows it intended to ameliorate was asking patently and also that court decisions eflrect of harsh certain proof impossible. As to what unpat- patentability, does not make Papesch et al. reference the Eobins may may entable chemical which way not have disclosed patentable under decisions ground uses, is no of dis- we think that section, antedating of that the enactment decision in that case because our tinction Papesch. dealt reviewed in We also appellant disclosed rested what compound so was contention disclosed in reference. was not pay attention we should no obvious that here rests similar decision Our ground. issue, or advan- its unforeseeable beneficial On the obviousness determining vague possible vantageous uses properties “basket” disclosure patents and in the French and Swedish patentability, rejecting proposition, vague equally of the Mart- disclosure patent saying: standpoint of “From the patent unimportant. is im- in portant What law, properties and all dis- is the fact that the inseparable; and the are one by appellants is disclosed in covered thing.” same ground art. We see factual (the distinguish Papesch The board and the solicitor exam- on him) did This is also our answer to the not have the case before case. iner “ * * * attempt distinguish solicitor’s claims to chemical saying: case in are drawn to more They structural formulae. definethe case, “In the instant the French compounds themselves and com- pounds possess properties which patent discloses utilities therein, and to disclosed along must be considered with the extent, the factual situation formulae. Papesch here differs from that of the ” * * * might appear “Here case the esters concept be obvious in terms further, however, He went a bit in as- their structure but that is half serting compound Example that the game. There remains the con- of the French evi- shown properties sideration dence the Dorzbach affidavit to have *13 * * * unexpected esters. That appellants’ “described for property ignored cannot be in the * * While the evidence determination of obviousness of the does show that the had a blood claimed as esters substances and not sugar lowering property, level it also dis- as structural formulae.” lethal, it closed that was a fact omitted course, Of we made the same sort of hold- argument. Very high from the solicitor’s ing Lambooy in the case and in Pe- toxicity, view, any in our cancels out no- tering claims, yet case to some “utility.” tion of anti-diabetic Further- present Patent Officehas continued to more, appellants it was who disclosed the hope identical issue to us. We our view property to which solicitor refers. law has now become clear. was not known to the art. There remains to consider. one foregoing reasons, For the we think opinion presents argument The board an clearly principles this case is within the why wrong, as to our view of the law is Papesch of the case and we see need following passage: in the repeat anything stated. That “The French mentions textile alone, having not a case that stands been treating agents, disinfectants, para- predicated on the or so ten cases reviewed siticides, plasticizers and intermedi- therein. We have also it or followed If ates. made someone applied principles the same without re- ' coming scope of the ferring Jr., Riden, to it In in re 1411, purposes claims for such or used 761, Judge F.2d 50 CCPA where purposes, them for such the claims Almond, speaking court, for said: infringed, would be but what would “Chemical should not cases be decid- lowering sugar blood have to do solely homology ed basis argument with the matter? The analogy in structural formulae. The property based on this would of determination obviousness is not germane course be to at least some overlaying the mechanistic of chem- [process non-elected ical formulae to observe whether a lowering sugar in the treat- greater methylene than a difference ment which are so re- diabetes?] aor chlorine atom exists.” property sig- stricted that this nificance, but to allow Lunsford, 526, and in In re F.2d property reason of this when Martin, it will Judge CCPA speaking wherein activity wholly court, dominate unrelated finding for the an “un- property argued seem does property obvious inherent in the claimed somewhat irrational.” compounds” sufficient overcome a showing very structural given close obvi- We have full consideration ousness, foregoing. said “there is no in basis law holdings We do not our think ignoring any property,” in are irrational and we have made them Ward, re 329 F.2d 51 CCPA eyes open. put with our The solicitor wherein the court said: question flatly us at before the con- that, give saying argument no domination whatever over the elusion of his deny appellants had disclosed references. while did balancing another, For alternatives important field invention made protection appel- providing adequate question medication, of diabetic group of anti-diabetic way lants’ limited is, to claim it “Is this the court agents against possibility mere so Should it in this case? might toWish use some of them someone -property that the the invention making purpose a tex- discovery appellants made size, merely tile we the former. favor set the claim and not defined position.” our forth in That’s the record ? foregoing reasons and others For the Papesch cases follow- Again, and later position stated we considered same ing principles, Papesch approving the decision it and answered compounds, recognizing reversed. claims to advantages practical product claims have Reversed. standpoint protection. As above, con- have indicated where arewe (concurring). MARTIN, Justice cerned with new in which un- found, agree majority opinion properties I ex- obvious properties with the cept the com- insofar as it finds 102 re- inherent a section jection pounds, say could do not “some- the board’s decision. even I *14 passing say what reference to irrational” to “invention” think the board’s compounds. Petering, is not in the re 301 F.2d 49c CPA Semantics aside, by following Petering ap- e., hard were stated i. facts pellants’ response anticipat- and ed,” “can counsel in to court even be said questioning argument: properly as a at the end his can be taken section rejection. If meant such the board process “The Pat-\ claims that the rejection passing un- comment be a ent us to | Officewould like drive have so der section it should stated. very very, j little value as a real honest-to-goodness i live We matter. notes, majority opinion As the the ex- simply that. have to know So \ and solicitor aminer restrict themselves ¡why product
ask for claims and that’s one of the view that * ** difficulty we’re here. The obviousness section In con- under 103. Patent this: section 271 i rejection, nection with obviousness helped immensely Code out with correctly Petering, supra, In re cited j spect problem j to this misuse but by majority second since the issue j it does not a method claim the make of obviousness. that case equivalent claim, of a Ex- board affirmed “the decision and/' * difficulty.” * that is the fundamental rejecting aminer the claims notify Appellants did not this court view, brief, is that the Our appeal appeal their reasons patent system principle of basic rejection based from an affirmance of a protect inventions which meet on section 102. statutory requirements. inven Valuable Petering Thus, given as protection author tions should value case, must as dictum the dis- view I in the world of real business majority opinion, under in the cussion courts. Share the board’s allowing heading Anticipa- “The Board’s Own fear that com theoretical Rejection,” portion of In re tion of that pound appeal will “dominate Petering relates to the section activity” respect to the use appeal us does before purposes such as issue. opportunity present to indicate patent, clear those disclosed French Petering case the limits purposes either other than the treatment enabling scope place broadly pos diabetes, put thing, section diselosures claims here will sible. For one