*1 52 CCPA Application of Nathaniel GRIER. Appeal
Patent No. 7258.
United States Court Customs Appeals. and Patent
March *2 Judge.
ALMOND, appeals from a Nathaniel deci- Grier affirming Appeals Board of sion 1-3, examiner’s claims Joseph Hirsehmann, City, New York 9, 16, application1 17 and 19-21 in his appellant. for fungicidal agent. for a Claims 1 and 2 Mooré-,Washington, C. Clarence W. D. sought compounds illustrative (Fred Washington, Sherling, C., W. D. - patented. to be counsel), for the Commissioner of- carboxylic “1. A of a Patents. organic 8-hydroxy- ester of an WORLEY, Judge, Before Chief quinoline. RICH, MARTIN, SMITH, and AL- Judges. MOND, compound “2. A of the formula acyl group wherein R is the Appellant an or- skin. describes his inventive ganic carboxylic acid, and X concept is a mem- as follows: group consisting hydro- ber of the Appellant, however, conceived the gen, alkyl, lower and chlorine.” by blocking hydroxyl idea that composi- Claim 16 is illustrative (pyridine) groups and amine tion claims. oxine, the irritant action could be re- duced or pharmaceutical eliminated while still re- preparation “A for taining antifungal activity; fungal the treatment of infections is, by forming comprising an pharmaceutical еster with the OH carrier (by group reaction with an compound mixed with a as defined carboxylic acid) by neutralizing in claim 1.” moiety (by adding the basic amine states that his “salt”). an acid to form However, may for be used “athletes foot” or as appellant attempted when prepare agents. mildewproofing industrial It is salts, esters, he found that with 8-hydroxyquin- admitted the use of many salifying tried, acids that he oline, oxine, also known as place. Thus, no reaction would take * * as described in the 8-hydroxy- benzoic acid еster quinoline could not be made to form malonic, maleic, citric, a salt with tar- taric, phthalic, B-resorcylic gen- variety tisic acids under a of condi- tions, despite 8-hydroxy- fact that quinoline readily itself forms salts antifungicide known, as an acids, being is well but with these the salts well- produces irritation when used on the defined and isolatable. 758,555, September “Fungicidal 2, 1958, Agent 1. Serial No. filed and Process for Man ufacturing Same.” however, Appellant found, that sal- that the record discloses examiner icylic outstаnding rejected excep- prop- was 1-2 for claims failure to erly invention; salts not and formed define the claims 1-2 as preferred unpatentable record, benzoic acid ester of 8- over the art of hydroxyquinoline lacking adequate 1-2 but also its oth- 13-14 *3 phthalic acid, support specification. er esters. Even in the The board closely salicylic acid, to related sustained the examiner as to 1 claims 8-benzoyl- failed salt to form a and 2 but reversed as to claims 13 and oxyquinoline. 14. aрpear, it For hereinafter to appellant’s specification reasons As stated necessary discuss further claims board, is not to 8-benzoyloxyquino-
noted salicylate, 13 and 14 in connection with the above pre- appellant’s line of one noted species, activity contentions. ferred an order of has parent at least that of three-fold inadequacy turn asserted We to the compound, 8-hydroxyquinoline. they appeal of of as relate the reasons Analyzing 1 the reаsons to claims and 2. The examiner allowed claims to 8-ben- cumulatively, assign- appeal of we zoyloxymethylquinoline salicylates find amply embracing rejec- di-8-quinolinylphthalate di-salicylate ments of error but rejected generic unpatentable over a species as combination claims and claims claiming subject references; of matter 8-benzoyloxyquinoline to from the refer- 8-benzoyloxyehloroquinoline salicylates. would be obvious failing ; being unduly grounds ences rejection broad and applied The several of sustaining against point invention; to out the sep- will claims be discussed rejection arately. of certain claims reasons rejection applied to as un- others Inadequate patentable specific Disclosure over a reference. of our At the threshold consideration judgment In our the reasons of presented, appears here issues appeal sufficiently scope are broad in disposition necessary to make оf certain bring adequate pur within our set in the contentions forth solicitor’s comprehension every view and facet of argument brief and asserted before the matter before us at essential us. justice. tainment the ends sufficiently appeal replete reasons of appeal It contended cognizable properly substance en of claims 1 and 2 must be dismissed be determine, necessary, us to able if wheth appeal cause do reasons er or not the board committed еrror in rejection allege error in these rejecting lacking and 2 claims 1 ade lacking support specifi claims as in the quate support specification. in the In rejection cation and the must therefore adequate specification may support of the stand. It contended further if way saying another the claims are appeal is not dismissed as to claims unduly rejections Both broad. have lacking adequate 1-2 and claims 13-14 as their basis in 35 U.S.C. 112. The support rejection specification, specification and the claims constitute the of these should be claims affirmed be They heart of the record. are before “although appeal cause reason No. 8 us. Courts do not decide in a vacuum alleges error in such they nor are called close their 14, appel 13 and brief behalf eyes to the obvious. lant does not controvert or discuss the rejection.” possible There is no basis for com- parison support contentions, scope these аnd substance of al., appeal solicitor cites In re Gruschwitz et reasons here with the total 401, 320 F.2d 50 1498 and In lack of those CCPA attributes in the reasons LeBaron, 471, appeal majority 42 223 CCPA F.2d with which the
123 Gruschwitz, quarrel princi- dealt in In re have no with the this court We specifically ple Dreshfield, nor cumulative- in In re where neither ly enunciated assigned by 1013; appel- LeBaron, 235, were reasons F.2d 27 CCPA In re supra, Rogoff, 601, so-called reasons of and In re lant. numerically 733, merely were iden- the claims CCPA cited the solicitor. These allegation completely inapposite tified association with the cases are presented. the board had committed error situation here rejection. Timmerbeil, in In re As nothing The board did more than to 320 F.2d no reason purely ministerial exercise function assigned except whatsoever was a state- capacity. simply in its administrative ment, totally of a modicum of devoid pro nunc corrected time an error of omis- specificity, that the board had committed plainly siоn obvious to it. It made no error. new or different determination of an is- *4 judicial sue. It exercised no function. given appeal was Notice merely certified the fact an unre- May appel same date 1963. On the corded determination made the when request for lant reconsider filed further competence matter was within the full calling relating ation 13 and to claims 14 jurisdiction. of its It was well within the board’s attention to examiner’s the province doing. its in so Claims and 13 rejection of claims and board’s these 14 were allowed and are therefore blanket affirmation of the decision by appeal embraced before us. examiner with no 13 mention allowing claims 13 14 and the board rejection and in the discussion of the necessarily reversed the re- examiner’s opinion. board’s jection that the disclosure was inade- May 29, By letter dated 1963 the board quate. ground It seems clear that the allegations cognizance of the took rejection applied to claims 1 and 2 prayer pеtition for reconsidera- of the was also reversed since there is no basis by its decision certi- tion corrected distinguishing for between the two sets fying 13 and However, its as to claims reversal claims. since the record concluding point, is language not clear on this we will the deci- con- 14. The rejection applied sider the to claims changed from “AFFIRMED” sion was 1 and 2. to “AFFIRMED-IN-PART.” This ac- by the administrative offi- tion was taken states re- The examiner’s answer by The cer recognized order board. board jectiоn as follows: was and stated that it bereft rejection “The basis for this is jurisdiction to further consider the only specification prepares that appealed by pre- matter reason of appeal alkyl the unsubstituted or lower filing vious of the notice of organic carboxylic substituted jurisdic- consequent transference salicylates. quinoline Nowhere court, citing Allen, In re to this any specification there in- is The stat- 28 CCPA 792. board preparation of dication of the may, purposes appeal that “it ed recog- chloro derivative. While it is Court, any typographical to the correct original nized that claims con- omissions, errors, obvious etc.” so- part stitute licitor that this action contends spe- claims 13-14 were directed to taken after the notice board cific chloro derivatives of the claimed part was ultra vires on its and that it compounds, there is no basis for reversing could not effect of have the specification.” these claims in the rejectiоn because the decisions objecting board theretofore rendered did not men- to the lack of a rejection working describing tion this example but affirmed the exam- forma generally iner which is to be construed compound, tion of a chloro-substituted rejection. apparently relying as an affirmance of examiner is requirement Despite argument the “how make” lack of appellant’s brief, U.S.C. issue would then we think re appear jection Appellant’s whether one skilled in the be lacks merit. exam ple 8-benzoyloxy-4- art would to make VI be able the disclosed indicates compounds. methylquinoline prepared chloro-substituted argued point esterifying has not 4-methyl-8-hydroxyquin~ this first his brief. thought apparently rejection salifying He oline and then dropped had patent been acid. The because of the Neher board’s indicates 5-chloro-8-hydroxyquinoline may allowance of claims 13 and 14. The so- es be by undecylenic licitor terified maintains that since the acid chloride. rejeсtion, ehloro-8-hydroxyquinoline Since has not controverted it product easily must known in affirmed cites In Le- esterified as by Neher, dicated Baron. one We do not consider LeBaron skilled in art apparently making have no apposite. trouble LeBaron held that with appellant's chloro-substituted regard rejection, to a art failure according general process to the forth set argue particular that a feature recited working Thus, examples. patentable in a claim made aban- of claims 1 and 2 for an patentability donment of claim to inadequate regard disclosure with based on do the recited feature. We *5 compounds chloro is reversed. feel that a claim abandoned for failure Rejection Prior Art argue ground rejection. one Such particularly inequita- generic a result would The and the ben present ble in rejected case species where acid zoic were relied from letter the Patent obvious in view of art. might reasonably Offiсe primary reference, have led an article Matsum ura,2 him to believe had describes the formation of ben dropped. zoyloxyquinoline been hydrochloride, portion In that of the Matsumura arti- An article Van Winkle and Chris- incorporated cle record, upon by is no there tiansen was relied the examin- utility indication 8-benzoyloxy- salicylate, for 8-hydroxyquinoline er to show quinoline hydrochloride. or its 2. 52 J.Am.Chem.Soc. 463. J.Am.Pharm.Ass’n, 3. 18 794-796. performed in the Examiner holds substitution work article describes salicylic specifiсally as the molecule of salifying acid if the acid to determine order agent hydro- 8-hydroxyquinoline nu- attached accompany- irritation chloric acid Matsumura affected skin cleus ing cited as anti- be obvious view the use of the sulphate, compounds, septics. art.” Five P-resoreylate salicy- citrate, tartrate, argues that salification indicated late were tested. Results 8-benzoyloxyquinoline of Matsumura changing little acid molecule had salicylic acid obvious antiseptic irritа- effect on action and points many to the fact that or- activity affected tion. was Germicidal ganic only salicylic acids tested being sulphate and citrate worked. davit, further relies on affi- He his germicide. most effective decision, filed after the board’s propionic which indicates that reference, patent acetic and Ne- The third acids do not her,4 undecylenic form salts with the Neher acid esters of discloses compounds. 8-hydroxy quinolines, was conten- Neher states that teaching tion that Neher’s was erroneous propionic
and that failure acetic and salify acids to an oxine ester would lead away using from another such as acid. In its consider- affidavit, ation board did not but criticize it stated: “Appellant’s attempts unsuccessful prepare the salts disclosed in Neher are not considered as affect- ing teaching salts, clear of such large acids, both number of salts *6 regard by without to the method organic (including mineral and acetic they were mаde.” acids) propionic “in can be formed and argues The solicitor that if acetic and the usual manner.” propionic salify acids will oxine not the examiner’s the summarized The board ester, position as follows: “ * * * only a chemist without position Examiner’s “It is the slightest stop the initiative would prior compounds art of the that carboxylic trying without other antifungal possess known to are acids, salicylic and acid would be one activity; specific of ester that by person of the to first be tried 8-hydroxyquinоline claim defined in salicylic skilled in the art because [8-benzoyloxyquinoline] is shown acid is known to be useful in this and the substitution in Matsumura taught respect by as et Van Winkle salifying as the of acid al." hydrochloride agent place in of sufficiently to one to evident seems overlook be This statement would ordinary in oxine and the oxine in art view skill this difference between of pro- of acetic and The Examiner The failure of Van Winkle et al. ester. showing salify pionic oxine to ester refers to Neher acids furthеr organic concept salification of the indicate that the broad 8-hydroxyquinoline and cor- is more difficult than salification ester esters might suggest halogen methyl responding oxine and well sub- stopping. “initiative” If one exhibited thereof salified stituted derivatives having article, organic by to the Van Winkle and looked acids as other activity. Accordingly, antifungal the citrate the most obvious acids are January 12, 2,666,058, 4. U.S.Patent acids, |3-resorcylate. ac- ‘a mere Yet these renders the claims invitation experiment’ cording to to meet the to uncontroverted statement fails salify application, requirements The appellant’s will not of 35 U.S.C. 112. go pinonic acid, acid, further would esters of the oxine ester. To caronic thujaketonic require acid, caryophyllenic initiative. indeed acid, acid, em- vitamin etc. are A2 considered is Another factor be by terminology ‘carboxy- braced improved properties of com- organic Clearly lic acid ester.’ such compared parent pounds com- complex supported structures are pound Oxine causes skin irrita- oxine. description of the invention tion, appellant’s compounds are whereas or relatively of irritation. Further- free working examples.” board, appellant’s more, as noted 8-benzoyloxyquinoline has The examiner also felt that the term em- antifungal activity carboxylic containing which “is at least braced acids in- parent compound, operative three-fold that “substituents such as CH2= 8-hydrоxyquinoline.” The CH —C=C—CH=CH—C=CH— [sic].” Papesch, cites appellant argues applica- The that his urging proper- that tion indicates that essential feature compounds ties his must be considered is that it must be an the determination obviousness. carboxylic acid, and does not make The solicitor a contends difference any difference what the acid is. He fur- degree sought properties between the ther states: patented prior be art does “Applicant not, course, has tested not establish unobviousness. think We carboxylic oxine; all acid esters of large degree, difference in such but he has tested a sufficient number present here, persuasive as is evidence to reach the reasonable conclusion along to be considered with other evi- esterifying the nature dence unobviousness. * * is of consequence no carefully weighing After the evidence us, problem confronting we hold that before claimed us here obvious view is not novel one. We are well aware arguments sure, possible, art. on both sides. The appellant’s compound, requires conformity to reconstruct care- Patent Office strict fitting fully together protect the three refer- the statute in order to However, public. applicant, hand, ences. view of the diffi- on the other *7 salifying language culties encountered in an oxine should not be denied the use of necessary give improved properties pro ester and to him the ob- the broadest salifying proper agent, scope tained when tection commensurate with the of acid, chosen, deciding is a his disclosed such recon- invention. In question breadth, struction cannot be considered an ob- undue it is neces sary rejection scope vious one. art then to is consider the thus disclosed reversed. invention. specification appellant In his teaches Undue Breadth may dibasic, monobasic, acid be 1, 2, 3,16, 19 21 Claims and were heterocyclic. acids aromatic or These
rejected failing properly define fоllowing “alkyl, groups, may contain the * * * under 35 the invention the claims aralkyl, furyl, aryl, aralkylene, 112 U.S.C. because of the term “car Appellant and the like.” has indicated boxylic organic objection acid.” The carboxyl group is the essential was stated the examiner’s answer sug- part He acid. has follows^ gested theory supports which con- this terminology Furthermore, such “The use of broad tention. he has defined carboxylic supported by broadly acids and named not esters, Timmerbeil, range g., opinion sрecific in In re 320 F.2d e. wide 413, acetate, cyclopentylacetate, palmitate, CCPA veratrate, phthalate benzoate, and suc- appeal waste our time be- Reasons of the re- cinate. It is further noted that appears to con- cause the Patent Office fungicide 8- is limited to mainder of the legal duty its to waste its sider to be salicylic acid, hydroxyquinoline concocting arguments why rea- time as to according im- are legally may appeal sons of not suffi- determining prоperties portant in conflicting many cient under some of our opinions compound. question. on the In view of the breadth of the disclo- backlog in court in- Meanwhile the this portion appellant’s sure of Office, creases as it does in threatening Patent nothing contention that there is critical further, such to increase carboxylic used, hold that we govern- wasting to sound inimical time “carboxylic unduly the term acid” is ment. holding thus, broad. In we do under- Question The Claim Jurisdictional 13-lb estimate the seriousness of ex- objections. However, aminer’s in this appears opinion to take the The court’s dangers case we do not feel that the “purely ministerial” view that great scope appellant’s so pro nunc tunc correction the board claims should be restricted. The solicitor opinion, express intention to its Sus, 494, relies In re 306 F.2d 14, presents a fact allow claims 13 and asserting distinguishable situation from that in broadly invention Sus, too claimed. In Allen, 115 F.2d 28 CCPA 792. aryl” this court found “substituted to be filing day following Allen, too broad because a limited number appeal rendered of the notice the board aryl compounds were disclosed and be- saying: a decision cause compounds specifi- use petition for reconsidera- “This is a cally securing disclosed was essential September tion of our decision dated the asserted novel results. We do not 30, 1939. have that situation here. has claim 3 is carboxylic “Reconsideration of broadly defined his acids Through requested. inadvertence according has theory indicated that to his listed as allow- this claim was not carboxylic almost acid will It con- able in our former decision. work. as the tains the same limitation The decision of the board is thus claims which we held allowable.” reversed. [Emphasis added.] Reversed. board allowed claim 3 but this court jurisdiction held board was without RICH, Judge, SMITH, with whom taking ap- to do so because of joins Judge, (concurring). peal. thereupon considered claim as why This example case is one more rejected, reviewed dispensed reasons merits, should be very and allowed it for the reason *8 by statutory They it, great amendment. the board had tried a to allow continue energy to waste our supererogation. time and in work of useless debate over senseless technicali- I Since think in the the decision instant ties. clearly case is sound and is inconsistent my concurring dissenting opin- See Allen, and expressly I overrule LePage’s Inc., 455, ions in In re 312 F.2d Allen extent hereinafter indicated Gruschwitz, CCPA and In re and leave not it to be inferred that we 1498, resрec- 320 50 have to some uncertain extent modified tively, Judge dissenting and Smith’s it. good supposedly found con- is a reason to overrule or the “reason” There reasoning trolling why Allen, agency parte in can- Allen to ex cases. as treating faulty go beyond opinion in far in- all not correction that is advertently
appeals and from the Patent erroneous con- this court refusals rights though they appeals any part were from or all of the de- Office as cede appellate appellant a The manded the case is trial court to an while court. parties why analogy only inter in is holds in cases our court. There no reason we tribunal, appellants’ a should hear wherein Patent Office and determine patent registra- claims to or Board of Patent or the trademark Interferences rights Appeal Trademark Trial and in an which the Patent is Board Office willing opposition interference, or concede him. Our renders a deci- function determining rights merely sion under the law аs between two is to review refusals parties litigant, or adhered to. more none of whom is doing the Patent Office. In litigation, plaintiff In civil when (though tribunal does act a court it is defendant, makes of a demands the first one) procedure and the followed in court to hear them does not insist on analogous other may courts is well hearing deciding cases in which the be followed. willing judg- defendants are to confess parte ex is en- cases the situation Why parte ment. should we? ex tirely different and Patent Office cases we are the to hear court first Appeals tribunal, Board or claim. Appeal Trademark Trial act- Board case, a result As of the Allen ing parte case, ex an is but an arm of anomalous situation now exists agency the administrative is itself rigid position takes a Patent Office party litigant when case reaches jurisdiction anything in to do an loses applicant-appellant this court. The parte notice of case as soon as the ex parte our court in an еx case is here demanding rights law, filed; his but if under the to our court re- against private party, some case but from the view of its refusal the same agency. sought agency ap- administrative 145 or U.S.C. That under 35 U.S.C. § pears through court, 1071(b) (Sec. 21(b) Solicitor, in our of the Lanham Act against posture opposing amended) by .party civil action liti- gant but, realistically, agency still as Commissioner of Patents in the District refusing Court, appellant. Office itself demands Patent deems able posture any party The Patent other Officе to behave like defendant of a defendant, capable conceding not that of a to a suit and as court. The hearing any Appeals plaintiff's reason for at the case at time. all is to agency prevent, decide legally whether under to this court therefore justified wholly unnecessary If, any its refusal. ill-founded rea- whatever, agency son rule, technicality the desir- wishes to alter Allen any litigation. degree its refusal in able settlement of error to concede demands, and evil of the rule should be trans- his I reason, parently know of no authority either obvious.