*1 rеgarding gelatin expect- examiner as the any activity leading ed cause of enhanced dosages para- to reduced constituted one graph answer, while the immedi- ately succeeding paragraphs (2 pages) quoted, challenging above the fact of re- Smith, JJ., Martin and dissented. dosagе, gone duction in has unrebutted on this record. It is clear from the above that
Patent Office view was that there was synergism dosages
no evidenced Reports listed in the first set of Case by appellants, that, submitted ing arguendo, assum- was, there that it was due gelatin Appellants' to the sponse vehicle. re- point. was confined to the latter assume, arguendo, аppellants' We response proves gelatin vehicle not any synergism, to be the cause of but we compelled to affirm the decision of 1-14, the board as to claims since the prima analysis examiner's facie accurate proofs as to the submitted on the fact synergism dosages gonе has Un- rebutted on this record.
Affirmed.
SMITH, J., Henry Koster, City, concurs in the result. W. New York appellants.
Joseph Schimmel, Washington, D. C. (Raymond Martin, Washington, C., E. D. counsel), for the Commissioner of Pat- ents. RICH, Acting Judge, Before Chief MARTIN, SMITH, ALMOND,
53 CCPA Judges, Judge Application HEYNA, August WILLIAM H. KIRKP of Johannes Bauer and Klaus Berner. ATRICK.* Appeal Patent No. 7650. ALMOND, Judge. United States Court of Customs Appeals. appeal and Patent This is an from the decision of Appeals affirming May 19, the Board of jection the re 1966. appellants' ap of claims 1-6 of
Rehearing July 28, Denied 1966. plication 1 entitled "Yellow Water-Soluble Dyestuffs." Monoazo No claims have been allowed. appellants' The issue is whether compositions chemical are obvious under 294(d), of Section Title United States States Senior Judge * United District Code. Pennsylvania, Easteru District Heyna, Bauer, Berner, participate place 1. 3. A. and K. serial designated Chief 88,022 February No. filed pursuant provisions Judge WORLEY,
223 following patentability the сlaims 35 U.S.C. ments 103 view § references: issue: 16, July
Alsberg 2,895,785 21, 2,799,672 July 1957 al. 1959 et 2,657,205 (Alsberg) 27, 1953 al. et Oct. 2,424,493 (Heyna) 1947 July Muller al. et (Muller) descrip- Claim which suffices as a invention, tion of reads: foregoing references, addition monoazo-dyestuffs following cited references Water-soluble argu- of their the formula before board represents X yellow wherein member select Muller discloses water-soluble group consisting methyl ed dyestuffs, from the one of which has the structural alkoxy, represents and lower and Y formula: alkoxy group. lower * * * adopt designations ring, designated 2. We will the solicitor’s is a 6-membered groups appearing phenyl. ring for the various as The other 6-membered designations (to left) designated The formula. are: will be as the ring right, ring. portion HOgS- five-membered at diazo The chain containing nitrogen (N) atoms, two attached to the diazo O-CH2CH2-SO2 designated designated sulfatoethyl herein, ring for convenience is herein as pyrazolone. portion Depending from latter sulfone. The of the structural phenyl ring) in- group on the SO3H diazo that his discloses Muller further among coupling components cluded such nuclear contain the invention. groups, embraced “halogen atoms, alkyl stituents alkoxy groups, groups, yellow forth” and so nitro hav- discloses a (an ing formula: “pyrаzolone sulfonic acids” and that *3 dye yellow pre- dyeing Alsberg’s dyestuffs discloses are used for having component regenerated pared from diazo cellulose and re- or natural formula: fiber. act with the formula: coupling component the structural and a * * group, portion -N=:]Sr- *, includes .[the Muller] formula pyrazolone, will he referred to formulae considered as well component. coupling right hereinafter, located product has formula: *4 yellow dyestuff Alsberg, appellants discloses a Muller hav- and contend ing teachings respect formula: the structural that the reference with possiblе ring substituents are so broad suggestive particular
as not to be number location of and the substituents compounds. in their has solicitor argument by attempted to answer this showing pos- in fact number of by sible the refer- substituents disclosed large might appear ence is not as at first blush. greater no
While doubt by number of substituents disclosed prior likely be that a art the less will it particular suggested would be substituent art, to one of skill in the important in an more issue consideration of this kind which such is the context in Alsberg appears. and Mul disclosure ler, spe which we have two disclosures Appellants presented arguments two cifically structure set forth the skeleton patentability for before the board and appellants’ claimed rel here, relating reiterate them first egate general relatively to a discussion nonobviousness their possible groups few be sub dyestuffs claimed second Further, Alsberg stituted thereon. unexpected propеrties by exhibited such Muller, appellants, like are concerned dyestuffs. dyestuffs generally with same color Structural Nonobviousness (yellow) dyeing which are suitable conceding While the basic same materials. So far struc- as structure dyestuffs therefore, concerned, ture of their is disclosed we think that Property Unexpected Muller, in their en- taken tireties, suggestive of Appellants submitted an affidavit3 Accordingly, compounds. we yellow dyestuffs, which five compounds prima facie below, obvious find these set forth were formulae strength. tested tinctorial from a consideration structure. *5 date, the re- affidavit mentionеd in was rendered initial board decision 3. The quest 13, request recon- was filed in the Patent A Office. November 14, sec- considered the not was submitted December board sideration affidavit, day permitted so either. we will not do ond the last statute. request, appellants answer dated note that the examiner’s asked leave to We In the May 5, first- criticized the 1964 also the board’s file a second affidavit to meet substantially same filed the first affidavit. The affidavit criticism of request opinion reasons as did the board. such in an board refused dated December 1964. On the same *6 sought point proved by The to be ring the (sample II), substituted diazo two (two affidavit was that whereas the methoxy addition substituents groups in methoxy group ring of sample one to the diazo methoxy V methyl and one and one (samples III) I group and caused a in sample decrease IV) caused an increase strength the tinctorial a strength. vis un- vis the the tinctorial by exрected This of affidavit was criticized would be themselves to intensity dye- grounds, examiner and of board on two alter shade -and only stuff, completely one of which need discussed in inconclusive be render agreement of our view to drawn therewith. With the conclusion desired be regard affidavit, comparative appellants from show- the board stated: ing. therefore do not consider We * * * * * * comparative appellants’ claimed obviousness of that showing demonstrate, does not dyestuffs of to the chemist urged by appellants, the introduc- 103) knowledge (35 and skill U.S.C. groups pro- tion of two auxochrome upon obviousness based intensifying an of duce shade would be negated. thereof has been unexpected single since a auxochrome upon appel group It was incumbent intensity lowers the shade and convincing lants to clear and evi strength. submit comparisons tinctorial allegation un dencе their proper the affidavit not since expected Lohr, property. 317 F.2d re the differences between the various agree with the samples 50 CCPA 1274. We single are much more than the board that have not met this demonstrated; variable desired to be burden. in In re namely, As the court stated of the auxochrome effect Dunn, group. 349 F.2d 52 CCPA 1760: Sample 1, compared with sought proven “The cause and effect to be products (Samples 5) 4 and having is lost here in the welter of unfixed vari groups, two auxochrome ables.” Alsberg (Sample et al. 2) differing appellants’ products from We find the struc- only in groups the lack of auxochrome turally obvious, lacking proof of an component, in the azo further differs unexpected property, we affirm must vinyl in that it is a sulfone instead of board’s decision. sulfatoethyl sulfone, a contains the sul- Affirmed. group position, and, fone in an isomeric addition, includes two further MARTIN, Judge (dissenting). (chloro stituents methyl) in the agree I cannot with the conclusion phenyl ring pyrazolone coupling study my majority of the record since component. Sample 3, dye- the other has does not the examiner reveal single stuff auxochrome prima made facie case obviousness group differs from the et al. of the references. based on the structures appellants’ dyestuffs only not in exemplary be- of the differences As groups number of auxochrome *7 compounds the component, claimed and azo tween the by but also virtue of compounds, I focus attention ethyl the reference fact thаt it is an sulfate ester phenyl on the here on substituents sulfate, instead of the and contains a ring” by ring (called solici- the “diazo the linkage sulfonamide Instead of a sul- 2) majority opinion tor, at footnote group see component. fone in the azo Ad- dye. component of the ditionally, of the “diazo” grоup said sulfonamide is attached relationship, in isomeric as on Appellant substituents shows two group is the phenyl sulfonic acid in the ring” (besides sulfato the “diazo the ring pyrazolone of coupling the com- ortho and ethyl group) which are sulfone ponent. It can thus be seen that these [azo-group]. -N=N-grоup meta to the departures numerous from the struc- the discloses no substituents on Bolliger1 ring.” Heyna compounds, ture of the basic dis- which “diazo and by appellant liger 1. It should be cited made clear that an and references were may present Office, early prosecution evidence to the Patent tbe examiner including “references,” compounds to in an affi- his thereof were tested arguments timely patentability, for but such references were evi davit. Thus the * * * timely. presented dence must be the board.” The Bol- when “cited before Judge (dissenting). only substituent, SMITH, in the ortho close one CH3, Cl, OCH3, may position, which be dyestuff, Dealing as we are here with Bolliger very do have or OH. Muller and more is in- much it to seems me general “other” or statements about “fur- similarities than volved Muller states: ther” substituents. compounds chemical differences obviously compounds The diazo per us 103 admonishes se. U.S.C.. § substituents contain further nucleаr whole in as a to consider the invention sulfone-or sulfonamide- besides prior existed at of art which view halogen atoms, group, example, The was made. the time invention groups, alkyl groups, alkoxy nitro legal must determination obviousness groups, and so forth. conditions and with be under these made statemеnt, shows Muller Other than that specified in section the limitations specific examples are there no similarities of the claimed Structural ring.” any on the “diazo substituents prior are to be invention and the art Bolliger states: compared majority opin- is as done * * * components to The However, ion. it is thе differences be- course, may, contain other be used prior in- art and the claimed tween such, example, halo- substituents vention which must be ascertained gen acylamino atoms, groups, nitro then a whole invention as alkoxy groups, alkyl groups groups. or must be evaluated its obviousness as to However, advantageously there are to one of in the art. do skill I compounds used diazo no which contain an not find such evaluation the ma- hydroxyl group ortho-position to the jority legal opinion and find its con- I group. diazo factually clusion as to obviousness be to unsupportable. Judge Martin’s dissent Bolliger’s examples no sub- show either points differences, out technical CH3, stituents, only one, or or OCH3 largely structure, in terms of chemical group.” ortho to the “diazo “general and finds that basket dis- agree compelled appel- I am with closure” of the references not “ren- does general teachings lants that the in Muller compounds prima der the claimed facie Bolliger only “sug- can be taken as a obvious,” contrary majority’s find- gestion” might of what be substituted. ing. suggestion, appellants That note “is Additionally, it seems con- to me the practically incapable of assessment inso- sideration of chemical structures alone to possible far as the number substitu- compounds agree determine whether chemical tions is concerned.” also with I appellants specific sug- “prima contrary there is no are facie obvious” *** gestion inquiry required by “as to on where the statute. ring”] majority appliеs such [“diazo substitutions should section 103 here de- many termining be made or compounds how such substitutions that the claimed “prima should be made.” cannot I consider the facie obvious” on the basis of general basket disclosure of Muller and chemical structure and that proof to render the claimed havе failed to show of an “unex- prima pected facie majority obvious. The lack result.” Nowhere in the *8 Alsberg, single opinion stituents and the do I find a consideration of the stituent likewise invention as a whole. The obviousness do not convince me the or claimed com- unobviousness of an invention in the pounds prima facie obvious such that are chemical field should not be made to turn unexpected the burden proper- to per show on the narrow issue of structure se. appellants. ties Thus, important weighed shifts to I feel It is an factor to be only single the affidavits of Berner are un- but it remains a factor which necessary my view, to case. In is not here a determinate factor when board’s decision should be reversed. invention as a is considered. whole
My analysis of the invention as a begins
whole with a consideration of the
composition produced specific e., dye- purpose,
for a i. end a produce
stuff to a desired color effect on
particular materials. textile To. achieve end, appellants particular
this devised points on
substituents at certain ring. the diazo prior admittedly produced art yellow range
a in the but it did varying
not teach those struc- chemical by appel- tures the manner disclosed sought by
lants to appellants.. achieve results nothing majority opinion
I find in the
pointing any teaching prior to art appellants’
which would make invention obvious to those of skill in this majority art. It seems to me that jumps legal
opinion con- to its stated
clusion without from the record.
My independent consideration of the rec-
ord convinces inven- me that tion as a wholе un- well have been under
obvious the stated conditions of However, despite per- 103.
section this opinion giving
sonal due considera-
tion all the to factors considered
majority, present on the record case
presents such case of a clear doubt Staples, Carter, Parker & James G. legal to the ultimate conclusion of ob- 111., appellant. Chicago, viousness invention whole C., Joseph Washington, Schimmel, D. I that would doubt in resolve the favor for Commissioner of Patents. appellants. Nurkiewicz, In F.2d re 1020, 52 CCPA 848. WORLEY, Judge, and Chief Before ALMOND, RICH, MARTIN, SMITH Judges.
PER CURIAM. parte patentability appeal ex this appellant we the case moves that remand 53 CCPA Appeals Office Board of Patent Application Raymond P. FISCHER. recently is- appellant has seen because Appeal Patent No. 7861. patent from which sued he wishes Court of Customs United States copy a claim interference. Appeals. and Patent on The motion for remand is based 12, May legal appeal proposition that the jurisdiction and
under our exclusive being requested re- therefore we temporarily appellant linquish can so it steps Office. the Patent take desired opposes motion The Patent Office *9 grounds saying procedural that under on