*1 process requires prior distinguish thus two them from differences particu- art as shown the Cusic only is that The distinction my opin- in chloroformates, consequently the reference. These lar differences meaning resulting carbamates, Mere ion are not within the obvious new. are therefore, would, I novelty reactants, of 35 103. U.S.C. § of one of the rejection process novelty alleged here, reverse the does is the claims. conventional chemi- render an otherwise process patentable,

cal since does product 15-17, As to the I claims dis anything process impart to the majority sent the reasons in the art. one skilled unobvious to my Druey stated in in In dissent et ap- an constitutes no more than obvious al., 319 F.2d 50 CCPA-. process plication of old to new com- an point pounds. From the of view groups reactive chemical reaction concerned, place. takes

the same reaction do not that one of the

We find fact obvious, novel while

reactants here is but Larsen, in

the reactants old suffi- were us

cient convince that a different reached

sult that decision should be here. substitution of the novel n chloroformate into the old reaction Application of Jean DRUEY and Paul produced only expected to have results. Schmidt. rejection also claims 10-14 is Appeal Patent No. 6895. affirmed. Affirmed. Court of United States Customs Judge (dissenting). June SMITH, 1963. disagree Rehearing Sept. 27, reached the result Denied process majority as to both product and the claims. claims my not, in 10-14 Process claims governed opinion, the board what set forth” reasons found to be “the Larsen, 292 F.2d this court presents case CCPA from that situation factual different Larsen, reactants

Larsen. process contrary, Here, old. were for in is called material

.a novel reactant ap- process 10-14. The of claims the pealed process in process claims cover

which, invention was time the unknown, product (1) made, was end (2) one of reactants proc- process The claimed unknown. was requires start- selection two

ess thus materials, (one un- was of which process at the time such a

known made), product, make invention

(which time unknown at also was made). The claimed invention was

(cid:127).the *2 appellants’ application1

claim in entitled Sulfonamide,” “New Amino-Benzene as. unpatentable Six produc claims directed to the method of compound, defined claim, were allowed. remaining claim reads: A “11. member selected from the consisting group of 3-amino-2- phenyl-pyrazole and acid addition salts thereof.” invention, which is used as an in- preparation termediate in the aof sulfa drug, following has the structural for- mula : Joseph Kolodny, Baltimore, Md., G. Harry Goldsmith, (A. Summit, J.N. Ponack, Wenderoth, Ponack, & Lind

Washington, C., counsel), ap- D. pellants. According undisputed facts, appli Moore, Washington, Clarence W. D. C. first cants disclosed the inter (Joseph Schimmel, Washington, C.,D. parent application in a mediate in which counsel), for Commissioner of Patents. drug. also claimed the sulfa As a requirement by result a restriction WORLEY, Judge, Before Chief examiner, the instant continuation- RICH, MARTIN, SMITH in-part application was filed. The sole Judges. ALMOND, specification use disclosed in the for the is as an intermediate WORLEY, Judge. Chief preparation for the patented of the now Appellants seek reversal of drug, 3-(p-aminobenzene the deci- sulfona sion Board of mido)-2-phenyl-pyrazole having which af- rejection firmed the examiner’s of one structural formula: 702,540, 656,503, May 1. Serial No. filed December Serial No. filed which has matured into U.S. Patent No. 2,858,309, 28, 1958, issued on October in which claimed. dis- for said No use other record.

closed is: relied on

The reference *3 February 23, 872,801

French pat- disputed that French It is not the compound III can be teaches drug represent- the ent discloses the prepare used to -formula: the lasting effect, identify chemotherapeutic the as well we shall For convenience against stronger activity much as a roman numerals. drug streptococcal sepsis, than the sulfa rejected the The examiner patent, compound IV, of the French compound compound III compound I on been from had made reference considering them patent, of French the compound III. stating: homologues, adjacent to be examiner, commenting on the homologue unpat- “Ordinarily affidavit, stated: compound in the old entable subject unexpected “The affi- of a matter the absence concerning drug disclosed properties in the use davit the sulfa ” * * upon considered too remote to bear patentability the or the During prosecution parent the of the intermediate. The affidavit application, sulfa II was does not concern itself with the sub- patent; French IV the over sulfa however, ject ‘sought patented’. matter be the examiner withdrew emphasized by the use of the presented jection applicants after argue patent- affidavit to same' Consequent- Neipp. Dr. of one affidavit ability of two different classes of patented. ly, compound II In an subject matter.” unexpected properties to show effort I, board, agreeing instantly with the exam iner, held, despite applicants same affidavit submitted the asserted su appellants’ parent periority had case. applicants’ shows sul- II the sulfa affidavit over That IV II, patent, drug, compound made claimed French the former is not fa “the longer higher subject sought compound I, patented”3 had a matter be subject part: prior art 103 states in are such that § 3. 35 U.S.C. though patent as a “A not be obtained matter whole would have been ob- identically disclosed vious at the time invention was invention person having ordinary forth in section 102 skill described as. .set subject pertains. title, to which said matter if the between art * of this differences * *” (Emphasis sought supplied). subject patented and matter to be Continuing, viousness or new case. stat- unobviousness compound. Herr, 304 F.2d ed: “ * * * CCPA-. ly Here the difference is mere to whatever extent methyl group the omission aof superiority may be the asserted pyrazole ring. well patentability, appellants’ basis for ring simple pyrazole known con recognized by contribution has been tains no think substituents all. We granting 2,858,- of Patent No. strong those considerations constitute us, how- 309. The before methyl evidence that omission of the light, ever, must shine its own group ring is an obvious varia glory not in of another the reflected *4 thereby compound, tion of the reference compound.” establishing prima a un facie ease of argument appellants’ found board patentability compound of claimed I over compound and that the claimed refer compound ap Hence, reference III. if homologues compound ence III are not pellants prevail, they are to must over be to during inconsistent with statements weight Thus, come the of that evidence. prosecution appel of both the issue here is whether the affidavit parent case, in lants’ well the in as as to sufficient do so or whether the show stant case.4 board stated was ing therein is too remote. compound I clear that the is the claimed appellants’ position homologue It adjacent compound that next of since the by use disclosed for their patent, III disclosed the French with compound I is as allegedly an intermediate for scope of that term as production compound II, direct by of sulfa court, defined and decisions this of the “best evidence” which be sub concluded: mitted under the circumstances of this any event, “In and this is the case is a unexpected prop of the important aspect most to mat- this erty compound II, of the sulfa as com ter, fully we are satisfied pared to one made from the reference compound would be obvious claimed compound They III. contend further that ordinary person of in to skill this this so-called “best evidence” rule has knowledge compound art ” previous been * embraced * * board in patent. of French decisions, parte Parker, such as Ex 102 USPQ 367, need not decide here We whether and parte reaffirmed in Ex question properly Brody, in USPQ 611, 122 and that the rule homologues. appears us labeled to Marzall, D.C., stems Parker v. 736, Supp. cited from authorities solicitor 92 F. was cited this court homologue appellants approval that the term with Schechter, is used sense, chemists times F.2d broad However, CCPA 1009. argues, at other times in a more nar agree, solicitor and we In Finley, or strict The name to row used sense. 174 F.2d designate relationship point, re between more in and that the standard necessarily requires is not lated con set forth there ing the verified show trolling; it is the of that to utility closeness rela “relate to the of the com tionship pound actually being which is ob- indicative claimed instead of logous’ methylated prosecution case, pyrazoles In the the instant of the ref- ” * * * appellants August state in their letter erence. 29,1958: organic chemistry 5. Standard texts on show “ * * * patent may While the be said pyrazole to be ‘adjacent homologs’ of disclose to compounds, attention is direct- to the fact that the sulfonamides form- ed instantly claimed intermedi- superior been have shown to be far ates using formed sulfonamides the ‘homo- to pared. record that the thereof,” “if shows derivative some belong therapeutic properties here not tested itself the claimed any drug, not explana the sulfa superior to compounds properties, an to show preparation. necessary why to test its it is tion as requirements. Appellants any unexpected back properties given derivative the sulfa unexpected therapeutic no reason Appellants tested. the claimed must have should intermediate, should why necessarily We find properties, be have made complied made of record.” necessarily intermediate no reason and have why no show attribut relate those itself such why appellants therefrom. affidavit seems unexpected intermediate for drugs.” The examiner’s answer in reference terms “The ^[*] clearly clearly *» had no compound’s only the sulfa being to be an unobvious establishes my opinion, appealed choice in its preparation true, “only use”, but claim it seems to a result which use to test the prepared of sulfa 11 states is as an Neipp i. me e., *5 from one the reactants able to result. prepared. that The record shows it was Papesch, F. As stated in In we belong therapeutic properties here the 381, 50 1084: 2d CCPA any drug, not of the com to the sulfa standpoint patent “From the Ap preparation. pounds in its prop- law, compound its a and all of pellants’ affidavit,-therefore, fails to es inseparable; are are one erties compound has the claimed tablish that thing. graphic the same and formulae, any property, unexpected or unobvious nomencla- the chemical prima rebut facie hence fails to showing the systems ture, the of classification and of obviousness over the study concepts of homol- such as the sym- etc., ogy, isomerism, mere are The decision affirmed. is by can be bols Affirmed. compared. identified, classified, and compound But a formula Judge (dissenting). SMITH, a claim serve in and while it being patented, identify what is agree do not what to be of a deed underlying as the metes and concept bounds majority the of the thing identify land, plot opinion. made The statement is in the patented is not the formula but opinion “Appellants have made no compound by it. And identified the claimed intermediate * * thing patentability of the does any unexpected properties similarity depend its on majority disposes Neipp of the af- to that of another formula fidavit since it results shows the of tests similarity former drug but of of a sulfa made from the There to the latter. no claimed claim 11 when com- ignoring any prop- in law for drug basis pared with a sulfa made from the making comparison. erty such a pat- of the French reference similarity assumed based on a An ent. give comparison must of formulae majority states: assumption way that the to evidence “ ** why findWe no reason erroneous.” unexpected therapeutic proper- purpose is here served ties neces- useful should No pertinent sarily viewing I think relate back to the intermedi- what by Judge ate, why properties thoroughly treated such must nec- so cases essarily opinion. Papesch to one of Of these Rich attributable Marzall, D.C., F.Supp. pre- Parker v. reactants which it was cases very pertinent me to be seems to There applied facts. as advantage was unobvious evidence of an dyes yellow made found azo Despite the the claimed intermediates. board, deci- fact, as stated enactment “before the

sion was rendered statutory forth in 35 set

of the standard express 103”, me seems to

U.S.C. proper as to the workable view showing unex- admissable for evidence

pected properties com- in a chemical

pound. my opinion, of the the best evidence

properties here testing product is to be found compound. I can conceive made convincing unexpect- proof of

of no more unobvious those than to show intermediate unexpected properties of and unobvious therefrom. *6 Siggers, C., Philip Washington, E. D. I would therefore decision reverse the Oberholtzer, Minneapolis, and Alton V. board. Minn., appellant. for Moore, Washington,

Clarence W. C.D. (Jack C., Armore, Washington, E. D. counsel), for the Commissioner Pat- ents. WORLEY, Judge,

Before Chief RICH, MARTIN, SMITH, and AL- Judges. MOND, Judge. WORLEY, Chief appeal is from the decision Application BUDDE, of Walter M. Jr. Board which affirmed the re Appeal Patent No. 6959. jection ap appellant’s 19-30 of claims States United Court Customs Producing plication entitled “Method of Appeals. Fatty Acids, Epoxy Epoxy Salt Deriva June Epoxy unpat Alcohols” as tives entable over the appellant In his brief has withdrawn leaving only 26-28, 24 and claims 19-22, 25, 29 our claims con- No claims have been allowed. sideration. representative 19 is and reads: Claim producing In the method of “19. fatty epoxy saponifi- salt from a an long fatty epoxidized chain ester able temperature elevated condi- under mixing steps comprising tions, 624,747, 1. Serial November No. filed