316 F.2d 476 | C.C.P.A. | 1963
Lead Opinion
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1 to 18 of appellants’ application Ser. No. 580,448, filed April 25, 1956.
The invention relates to certain 4-chloro-3-oxo-A ^-steroids of the androstane and pregnane series and the method- of making them. The compounds differ from known 3-oxo-A4 5-steroids in having a chlorine atom attached to the number 4 carbon atom of the steroid nucleus.
Claims 1 and 10 are representative and read:
1. 4-Chloro-3-oxo- A 4-steroids of the androstane and pregnane 'series having the general formula
10. A method for the preparation of 4-chloro-3-oxo-A 4-steroids of the androstane and pregnane series, -which method comprises chlorinating a 3-oxo- A 4-steroid of the androstane and pregnane series having the general formula
to remove the elements of hydrogen chloride therefrom.
No references are relied upon, the sole ground of rejection being that the disclosure of how to use the compounds is insufficient to satisfy the requirement of 35 U.S.C. § 112.
The appellants’ specification, insofar as the disclosure of how to use the invention is concerned, states first:
“It is an object of the present invention to provide new 4-chloro-3-oxo-A4-steroids of the androstane and pregnane series which are of value on account of their biological properties or as intermediates in the preparation of compounds with useful biological properties.”
Secondly, another portion of the specification states:
“The process of the invention may be applied to a variety of 3-oxo-A'4-derivatives of the ci/cZo-pentenophenanthrene series. In particular, the process of the invention may be applied to steroid hormones containing the 3-oxo-A4-system to give the 4-chIoro-anaIogues of the aforesaid hormones, which new compounds will, in general, possess biological properties.”
The examiner and the Board of Appeals discussed only the first quoted portion of the specification, and said nothing of the second.
As to the first, the board said:
“We do not regard the disclosure that appellants’ compounds have ‘biological properties’ to be as [sic] sufficient disclosure of- utility. The term ‘biological properties’ is inclusive of a vast field of properties relating to plant or animal life. Included within such term are insecticidal, fungicidal, herbicidal, germicidal and other toxic properties. We agree with the Examiner that the meaning of the term ‘biological properties’ is so broad as not to be indicative of any particular utility.”
The appellants rely on the disclosure of 4-chloro-analogues of known steroid hormones as indicating to one skilled in the art to which the invention pertains just what “biological properties” are contemplated. The solicitor objects to the reliance on this portion of the specification because “The point now raised was not raised in the Patent Office, though appellants had ample opportunity to do so.” The disclosure relating to steroids having hormonal properties is said to be a new contention that cannot properly be raised here, citing In re Herthel, 174 F.2d 935, 36 CCPA 1095; In re Panagrossi et al., 277 F.2d 181, 47 CCPA 904.
We are of the opinion that appellants may rely on all of their specification even though the argument below centered about a portion of the specification which did not contain the term “hormone.” There is nothing in the Herthel or Panagrossi et al. cases that precludes reliance on all of the specification to show that the disclosure is sufficient to satisfy the requirements of the first parargaph of 35 U.S.C. § 112. The specification was before the examiner and the board from its filing date, and they have ruled that the disclosure of the claimed invention therein is not sufficient “to enable any person skilled in the art * * * to make and use the same.” 35 U.S.C. § 112. While appellants may not raise new issues or introduce new evidence on appeal, the evidence here, that is, the specification, has been in the case since April 25, 1956.
Considering the entire disclosure rather than the words “biological properties” only, it seems clear that one
A more difficult issue arises with the compound or product claims. Have appellants shown how to use the new compounds? We are of the opinion that when the entire disclosure, taken as a whole, is considered, one skilled in the art would be enabled to use the compounds. To take a specific example, it seems apparent that a steroid chemist would know that testosterone is the naturally occurring male hormone. It seems likely that the steroid chemist would then know how to use 4-chloro-testosterone, the compound recited in claim 3. Whether or not the results in use are the same or inferior or superior, the specific field of use would be indicated to a steroid chemist. No further skill would be required to use the compound in the manner in which the naturally occurring analogue is used. We agree with the appellants’ statement that: “It strains the imagination to think that a steroid chemist would believe that 3-oxo-A4-steroid compound of the androstane or pregnane series, readily perceivable to be analogous to a known steroid compound having hormonal properties, would be used for killing insects, or other equally remote use from uses generally made for such steroids.” Contrary to the statement of the examiner referred to by the board, it need not be “conclusively predicted” that androgenic or progestational activity is present in order to enable one skilled in the art to use the invention.
Under the view we take of the case, it is unnecessary to consider whether the disclosure of how to use the compounds as intermediates in the preparation of other steroids is sufficient.
For the foregoing reasons, the decision of the Board of Appeals is reversed.
Reversed.
WORLEY, Chief Judge, did not participate in this decision.
Concurrence in Part
(concurring in part and dissenting in part).
While I concur with the majority in the reversal of the board’s decision as to the rejection of method claims 10 through 15, I am unable to agree with the reversal of the board’s decision as to the rejection of compound claims 1 through 9 and 16 through 18.
The majority is of the opinion that when the entire disclosure, taken as a whole, is considered, one skilled in the art would know how to use the claimed compounds. The majority opinion states “it seems apparent that a steroid chemist would know that testosterone is the naturally occurring male hormone. It seems likely that the steroid chemist would then know how to use 4-chloro-testosterone, the compound recited in claim 3.” From this we gather that the majority opinion considers that no further teaching would be required to use 4-chloro-testosterone in the manner in which the naturally occurring testosterone is used. I believe this is the crux of the opinion as to the reversal of examiner on claims 1 through 9 and 16 through 18.
I can find no statement in the application equating the biological activity of testosterone to that of 4-chloro-testoster-one and the record does not indicate that such knowledge was known at the time
and that the closely related steroid (Eeichstein’s substance U) has the structure
I would affirm the decision of the board as to claims 1 through 9 and 16 through 18, since I do not consider appellants’ disclosure of how to use the compounds recited in those claims sufficient to satisfy the requirement of 35 U.S.C. § 112.