Commissioner of Patents v. Deutsche Gold-Und-Silber-Scheideanstalt Vormals Roessler

coupled exemption request renewal. The Commission license its PATENTS, OF COMMISSIONER

aptly phrased answer: Appellant, that a a contention This amounts to any licensee, by requesting waiver of DEUTSCHE GOLD-UND-SILBER-SCHEIDEANSTALT VORM ALS appli- renewal rule is his Commission cation, ROESSLER, Appellee. evidentiary hear- an can obtain No. 20182. apply to him. it should clearly argument without Such United States substance. District of Columbia Circuit. Argued Feb. Appellant relies 8 F.C.C.2d at 4. 8, May 309(e) Decided 1.110 U.S.C. 47 C.F.R. § support in find either no proposition statute or the rule for the any Appellant

asserted and authority has not cited support. It is well-settled adoption proper that the of a in a rule proceeding incorporation results in its automatically subsequent into license re-

newals deter- unless the Commission Broadcasters, mines otherwise. Beloit C., U.S.App.D.C. Inc. v. F. C. principle equal- F.2d 962 This ly applicable Ap- to the situation here. pellant received its renewal on the basis duplication

that continued would serve public interest, deferring for later ap- consideration whether the rule should ply. clearly Such action was within the power way Commission’s and in no vio- statutory right hearing.

lates the to a It is also clear that 1.110 of the application Commission’s rules has here. rule concerns situations where less than a receives Appellant full authorization. here Bazelon, Judge, dissented. Chief received the full authorization to which it was entitled under statute and

rules. these circumstances we do reasonably

believe the rule can be inter- preted mandatory. making hearing appealing arguments

There are when arewe confronted with a ac- Commission discourage tion which seems to a broad- provide high quality

caster who seeks programs unfortunately which are all

too rare. But if the choice is ours range the decision is within those by Congress entrusted to the Commis- sion.

Affirmed.

Schimmel, Solicitor, Joseph

Messrs. Raymond Martin, Atty., E. United Office, appellant.

States Patent Jennings Bailey, Jr., Washington, Mr. C., Jr., Hugo Huettig, D. with whom Mr. brief, Washington, C., on D. was appellee. Feeny, Messrs. Charles E. Philadel- phia, Pa., Donald R. Dunner and Herbert Sherman, Washington, I. C.,D. filed a brief on behalf of The Patent American Association, Law as curiae. amicus Washing- Mosher, Messrs. Ellsworth H. ton, C., appearance D. also entered an for amicus curiae. Judge, Before Chief Bazelon, Bur-

ger Judges. Circuit Robinson, Judge: BURGER, Circuit appeals Commissioner Patents from an order of the District Court di- recting patent Appellee him issue patent application.1 two aof claims Appellee, corporation, a West German assignee application, entitled “Thiophenylpyridyl Amine, Chlorothi- compel Appellant Deutsche Gold-und-Silber-Scheideanstalt to issue a fol- lowing application Vormals ents, Roessler v. Pat denial of the F.Supp. (D.D.C.1966). Examiner the Patent Office Board by Ap Appeals. Suit was in that instituted pellee (1964) under 35 § U.S.C. references, Amine, was to traverse the ophenylpyridyl Their Salts generic, re- con- insufficient. The Board Preparation.” Claim is claims, process versed as to sisting com- ammonia-derivative of an stand,4 group affirmed the Examiner com- still selected claims, generic specific general pounds formula. described appeal, find- same claims in issue on specific ammonia-derivative Claim unpatentable meet them for failure to specie is a identified of Claim requirement of sec- 1-azaphenothi- the non-obviousness nomenclature chemical agreed 103. The tion Board further azine. the Examiner the affidavit Admitting Office Patent finding ineffective to overcome “revoluntionary ap- taking a new and obviousness, because no proach,” raises four the Commissioner proper- pharmacological made as (1) under 35 U.S. here: issues themselves ties obviousness C. affidavit.5 grant of alone bar is an absolute Apparently finding obvious- structural patent; (2) in the whether “advance ness, the determined patentability art” condition fourth proper- existence novel beneficial required by v. and Graham section 103 compounds ties in the claimed served to Co., 1, 86 S.Ct. John Deere 383 U.S. finding overcome the of obviousness due (1966); (3) whether L.Ed.2d to similarities. order to In comparative tests evidence between references, Appellee meet its isomers showing introduced evidence novel vermi- satisfy was the burden insufficient properties cidal the claimed com- proof; (4) the District pounds suggested in disclosed basing Court erred in its decision on sec- prior art. was also introduced Evidence following ondary and not showing the enhanced effectiveness rule. “best evidence” compounds as in the intermediates patented preparation sedatives background be The factual can stated antihistamines. briefly. Appellee’s application consisted including generic, specific, of six claims process re- claims. The Examiner light jected five of the of four claims in Structural Obviousness references, prior art and the last claim statutory

was also cancelled. Examiner found criteria The third affidavit,3 grant “rule patent, 132” submitted for the “nonobvious- process 2. The Patent Office Solicitor conceded claims have been al- two approach the Commissioner’s was lowed. “revolutionary” argument. oral 5. The made as the sedative amicus takes a similar view: derivatives, and antihistamine Andantol opinion It considered amicus compounds Dominal. When propositions foregoing that by advanced compounds were derived from they far tile Commissioner are so reach- superior purported phar to have ing implications sweep- in their and so macological properties than when derived scope any in their decisions compounds. from other Since no demon approving them this Court would stration was made revolutionary unquestionably be in its themselves when used as import patent field. intermediates, the Board held that Curiae, Pat- Brief for Amicus American pharmacological Association, p. final ent Law n product back the com did relate r/enerally 132. See 3. Patent Office Rule Ap citing preparation, used in its Horowitz, Patent Office Seidman & plication Druey, (rev.ed. and Practice 132.1 Rules CCPA See discussion 1962). infra. proc- Appellee one of the three withdrew Thus, in the District Court. ess claims ness,” accomplish, “[A] found section 103. Commissioner constructs judicial precedents following argument: em- codification of bracing in- condition” of Hotchkiss quite t should clear ante- [I] be that the vention, Deere Graham v. John “subject cedent of whole” matter as a sec- “subject in Section 103 of 35 U.S.C. is grant patent precludes tion 103 of a sought patented”, matter be claimed, expression obviously means subject if the differences between the distinguished subject matter, sought patented matter and the subject merely dis- matter which is subject prior art are such applicant’s specifications closed in ob- matter a whole been have not included in the claims. vious at the the invention was time having ordinary person made to a skill Reply Brief, p. (empha- Commissioner’s in the pertains. art to which said original). sis in General &Tire cf. Brenner, U.S.App.D.C. Co. Rubber 381 F.2d 270 Court, Supreme Graham case for the first devoted itself to an time, Initially we have some doubt concept of extensive discussion of the as to the of structural obvious “non-obviousness” as codified in section ness. con The Examiner found that the Some further clarification seems cept of the claimed either appears blurred order what to be a clearly taught or obvious from the area of law. corresponding which disclosed the oxygen analog compound; of the claimed The Commissioner asserts that under concept varying ring that the ni non-obviousness, struc- the standard of trogen position ring and isomers to create tural com- obviousness of the claimed compound taught by were prior from reference is art structure;10 name and and that patent. absolute bar to a conced- While preparation sug clearly methods were language of section gested by art. The Board of “subject whole,” matter as a refers Appeals agreed. Apparently al was this only formu- chemical structure or finding so the of the District al Court, la, properties but can include of the struc- though opinion entirely is not clear or ture and results it can on this score.11 Since a Office Patent pat statutory 6. The three conditions of note that the determination of what entability novelty utility, are and as de easy. the “art” is not (1964), fined in 35 U.S.C. 101-102. §§ analog organic 9. A chemical is an com- non-obviousness, and as set out in sec pound having closely a related structure tion 103. For an historical discussion of compound. to another Graham v. John Deere Co.: New Sup.Ct. Patents, compounds 10. Standards Isomers are different which Rev. have the same 293. molecular formula Thus, different molecular structures. Greenwood, (11 7. Hotchkiss they while contain the same number of How.) 248, L.Ed. which atoms, the same kinds of the atoms are gave birth “invention” standard attached to one another in different eventually replaced by re section 103’s ways. quirement of “non-obviousness.” opinion 11. Twice in its the court states quite broadly decision seems The Examiner’s “none of references considering specifically dif- or clear lie disclose” the claimed com- light pound, F.Supp. in in the art In ferences each ordinary opinion immediately pro- instance level of skill pharmacology. Furthermore, properties refer- ceeds to a if discussion of as present in structural obviousness ences relied demonstrate reading pharmocological conceded. A activities. We assume careful portions opinion, however, but we indi- the correctness of that decision fact, en- or- enormous known number of of non-obviousness determination ganic compounds gives weight, situation great Court rise titled absolutely unique unknown not be findings will the same effect erroneous,12 groupings completely new clearly of atoms in a set aside unless occurrence. obvious- chemical a rare as to the structural satisfied light pri- datum, In and the of this Court and the this claimed ness of the do references; parties of Customs and Patent or indeed, note, years challenge now the view some have been of We this. seem to patentability where is not determined however, ease this is not a old alone. property in an basis of was discovered structural obviousness new coupled involving simplistic Obvious molecular modification nor one Appellee’s change with a formula. novel in a chemical superiority properties15 time of known can substantial discloses experimenta- patentability. establish devoted to and effort were develop a new tion order Perhaps expression best properties and and unobvious with novel view that obvious but novel utility. conjunction be considered should raised issue Judge their Rich’s excellent ob- to which is the extent opinion Papesch, 315 operates in determination viousness (1963). After F.2d 50 CCPA 1084 non-obviousness discussing authorities various a whole concluding required de- the statute generally arises Structural obviousness patent- termination obviousness compound is —in the because the ability analog, jargon after consideration both of homolog, chemists’ —a pharmaceuti- isomer of the art references.13 structure chemical and the Warner, cates that the court found tion of obviousness view, to structure n. of our a combination remain recently implied Higley compared v. Bren the four individually references. most When U.S.App.D.C. compound, ner, with the (1967), no & there was and National Distillers obviousness. 855 U.S.App. Corp. Brenner, v. Cliem. 128 Hays Brenner, U.S.App.D.C. 12. v. See 123 386, 389 F.2d D.C. 927 96, 98, 287, (1966); F.2d 357 289 Cali aon a factual conclusion based this is legal Corp. Ladd, fornia Research v. 123 U.S. standard; clearly errone the thus App.D.C. 60, 64, 813, 356 F.2d 817 applies. ous rule Stieg (1966); v. Pat of U.S.App.D.C. 361, homolog of 122 F.2d a ents 353 13. A is member of a series (1965); compounds v. Esso in which member differs 899 Standard Oil Co. each 154, by U.S.App.D.C. constant 156- the next member a Sun Oil 97 cert, denied, example, 157, 37, 39-40, the F.2d atoms. 229 number of For series, homologous 973, 1027, family 351 76 S.Ct. 100 L.Ed. forms a alkane (1956). Ladd, succes- between 1491 U.S.App.D.C. Baenitz v. the constant difference Cf. 237, being 239-240, atom carbon F.2d members one sive claim). hydrogen atoms, g., 969, (process e. and two 971-972 CH4 (methane), (ethane), etc. It true that these cases refer to is C2H5 supra, by of 9-10 for definitions a of should novel into the as to issue any obvious,17 it not make less several subject unexpected matter has points should be noted. properties prohibited beneficial is First, appear it would argues that Graham case.” then He that sup prohibition position hardly Commissioner’s is this is derived from fact ported, contrary on the but is substan the issue properties is, of chemical tially by best, at undermined, “secondary Graham v. John a consideration” un der Deere 684 U.S. S.Ct. Graham. It is true that the Court in although great place he to Graham seems secondary mentions certain eon- Application Western, For recent See discussion see Ap- Is 35 U.S.C. McLamore, plicable F.2d Compounds? 989-990 to Chemical (C.C.P.A.1967); Wag (1964); Idea Note, 32 Geo.Wash. ner, Ap (C.C.P.A.1967); (1963). 371 F.2d 877 L.Rev. 429 plication Lunsford, (C.C.P.A.1966). success, utility. properties evidence of novel as “commercial such siderations Indeed, needs, case, failure to Graham this long unsolved felt but posi- at etc.,” 86 was the others, Commissioner’s consistent 383 U.S. court, Ap- g., Commissioner, equally tion. E. Brief for true it is 694. Court, (C.C. plication Higgins, ever Supreme including 369 F.2d 414 P.A.1966). nothing properties “sec- in Graham find chemical considered obvious- in the ondary” which calls for the radical shift in determination proposed. Note, 112 U.Pa.L.Rev. law ness. See (1964).18 Fourth, patent statutes Papeseh factor, we which to a whole to favor the would seem A second already occur 101 criteria —util is the rare standard. alluded, have ity largely completely dependent finding new com on the rence —is arrangements do, compound will of what molecular whose paper. prime predicted, at least on consideration be cannot Manson, accept of here. Brenner v. a determination If are to 16 L.Ed.2d 69 which cannot 86 S.Ct. obviousness phar chemical, rebutted reli- Commissioner, in addition to biological properties, few maceutical, or Graham, de- ance on refers to a recent patent pharmaceutical compounds will be posi- support cision of this court to his patent ed, aspect of the incentive and the tion, Hays Brenner, U.S.App.D.C. basic, system, lost will be Hays 96, 357 He views “mo important fact that an area.19 holding that section 103 an absolute sys patent nopoly” power in the exists bar to a where obviousness is as- facto, ipso it mean, tem does lan- sumed. It is true some of the anti an evil should be treated as guage Hays colorable basis affords a exclusivity com such trust sense. While contention, for his but it is also clear recognized scrutiny, it must be mands holding ques- was not directed temporary “monopoly” is a de of structural alone but tion obviousness creature of the Constitution liberate subject matter as a to obviousness Congress long pro implemented one completely whole, a different situation. encourage progress. technology mote Hays determine we made no effort matter was point what from the A salient comes third compound. The the case of a chemical Patent Of- Commissioner himself. The language plain of section 103 makes Rules, 132, permit particularly Rule fice subject mat- clear that obviousness rejection initial to meet an ter limited to a con- as a whole is not proof A tradi- unob.viousness. structure; and this con- always permit sideration tional been to method has para- position, of useful will be the factor here 18. The Commissioner's primarily responsible phrases for commercial suc- the Board of Patent long need, or a solution felt Papeseh: cess secondary advantages not make it a proof alone does not seen Such relationship occupy factor. than different proof or of of commercial success long-felt “filling As was stated at a recent seminar con- want” often pharmaceutical away invention, pat- [t]ake to establish sidered as sufficient concept entability modification of molecular doubt where some cases outstanding very exists, and our most few of but which unobviousness of today. Thus, drugs consistently available would be have been held as insuffi- morphine holding and the difference between of cient override the alone to methyl group; 11 unpatentability is a between ob- codeine desoxycorticosterone, in a clear case of noth- which does viousness. cortisone, humans, (em which for and Papesch, supra, F.2d at 315 386 oxygen everything, rejected by court). atom. phasis by the does is one It was Invention, Seminar, J. may 47 Papeseh Pharmaceutical true that be court. It well Pat.Oi'V.Soc’y 648, (1965). discovery chemistry, 682 the in the field of 664 family compounds. The Commis- a of sense of the with the common sistent following adopt have us the sioner would situation. logic: “sub- to 103 refers Since section proposi rejecting broad In the ject whole,” antecedent a matter as we by tion advanced sought “subject of is matter which ob make should it clear only patented,” obviously to refer large certainly to a factor is

viousness hence, compound; if that ob of determination be considered specifically claim not refer does subject a of the viousness particular property which demonstrates called an inference Whether it is whole. distinctly non-obviousness, it not does Mills, obviousness, Application 281 of of required claim in section the invention as 1960), (C.C.P.A. prima 218, 223 F.2d 112, 2, paragraph claims that but instead obviousness, Application facie of properties, for all uses and Rosselet, 847, 850, CCPA 52 of 347 overclaiming foreclosing thus and (1965), presumption obvi of or a 1533 public using from in an un- ousness, Henze, Application 181 of Ap- unobvious, related, but field.21 Cf. 201, is, we 196, CCPA plication (C.C. 376 F.2d Kirk, believe, The crucial factor immaterial.20 up- 1967). P.A. The Commissioner relies re the definition attached to the is not from some out-of-context statements legal lationship phraseology used nor the Graham, case, companion and also on the reached from to describe deductions Calmar, Inc. v. Cook Chem. 383 U.S. definition, proximity of rather but 1, 26, 86 S.Ct. 15 L.Ed.2d relationship non-obvious in terms of (1966). case, however, In the latter subject matter as a whole. ness parties agreed upon limitations certain final assertion from light existing it law claims. sweeping is contentions Commissioner’s cannot doubted that itself claim interesting compel a con does must not from be divorced a vacuum trary de result. views claim as He specifications descriptions and ac- diagram fining by mental name and companying See, g., Schering Corp. it. e. which, concept of a chemical (2d Gilbert, convey 153 F.2d Cir. ordinary chemist, 1946). both the structure and characteristics 17; Note, 32 Geo.WashL.Rev. are not unmindful dealing commonly in the area referred patent bar the Hass- correctly recognizes 21. The Commissioner area, Henze for the three Hass so named difficulty patenting but obvi- new eases, 122, 127, 141 F.2d 31 CCPA ous chemical on the basis Application 903, 908 properties novel This new uses. Henze, CCPA problem overclaiming arises from the cases antedate These patent given fact proof 103 and a rule that establish compound, although entire based on unexpected existence of unobvious property Thus, one it new discloses. new beneficial compound A, with holder appear obvious, is which would otherwise Y, X and foreclosed patentability. indicative Much has newly patented, using structurally obvi- little written on been compound B, properties. ous with obvious a discussion of clarification. For Y, merely X B because doctrine, signifi and the its limitations possesses prop- also erty new unobvious homology see cance Z. Whether solution (C.C.P.A.1960). Mills, strictly limiting patentability rests Guttag, general see For discussion alone, process the new use or to the Doctrine, Hass-Henze J.Pat. made, however, a matter Off.Soc’y Collins, (1961); Commissioner, Congress, Chemistry Forgotten the Hass-Henze expertise greater courts with technical J.Pat.Off.Soc’y , Doctrine, decide in the first instance. supra Western, supra Western, note note (1962); at 449-452. see also expressed Constitution in the standard ignored. may not be and it the Art in Advance (emphasis 6, 86 at 688 at S.Ct. claim second The Commissioner’s Appellee District part). in and the added language in the Dis- some concerns error stating that advance correct in Court are opinion effect trict Court’s conditions ment is not one of the three a condition is not in the art” “advance patentability statutes. under the patentability.22 The Commissioner clear, im and at least this overlooks in cases unrelated refers us to several plied, con discussion Graham language suggests con- which certain ef conditions standard. stitutional The Appellee re- trary,23 and to Graham. congres fectuating standard are by sponds pointing to exclusion determination, standard sional legisla- three “advancement” by implemented the Com itself is to be pat- statutory tively-created conditions Thus, the missioner and courts.25 (1964). entability, 101-103 35 U.S.C. §§ semantic correctness opinion should not be misconstrued. Court introductory sentence From the U.S.App. Ladd, 124 Baenitz v. C f. Supreme it is clear that the Graham 969, (1966). 237, 240, D.C. 363 F.2d aware of distinction Court was well statutory patent- conditions of between requirement of advancement is ability standards24 constitutional something illusory focusing one, in- by perhaps This best illustrated capable precise than definition. Other following excerpt: implication was the an equivalent that advancement “Progress” used things Innovation, advancement, and phrase,26 Court in Gra- constitutional knowl- which add to the sum of useful ham define what con- made effort to edge requisites pat- inherent are Similarly, the stitutes an advancement. system which constitutional ent opinion determine does not tell how to Progress “promote must command * * * made, whether an advancement has been 0f Arts.” usefui This are look into bound first 22. a cer- When the inherent existence of may art be the to ascertain what utility in a tain beneficial claimed com- real and to de- merit of the invention require- unobvious, is itself cide it substan- ment that an must addition- tially art. advanced the ally un- that his show Watson, 97 L-O-F Glass Fibers Co. v. expectedly comparison more useful U.S.App.D.C. 69, 76, 40, compounds would amount art (1955). requirement prove “advance to a permits Patent Office statute art”, a condition grant patent only where inven- patentability under American tion, novelty, coexist. 101-103. Patent Law. U.S.C. §§ * * * is a Advance over added). (emphasis F.Supp. at 628 implicit in that recital. fourth element following indicative statements 201, Henze, 196, upon by relied the Commission- those 37 GCPA er: lapse years, After of 15 administering law, pat- again attention on the focuses art, find into the first looks entability stand- under of inventions alleged dis- what the real merit of 8, I, 8, the Consti- ard of Art. cl. covery is, it and whether or invention pre- conditions tution substantially. has advanced the by of the United States. scribed laws On- v. Minnesota & Eibel Process Co. (emphasis at 686 383 U.S. at 86 S.Ct. Paper 261 U.S. tario added). 322, 328, L.Ed. 523 meas- invention must be [P]atentable Id. at 86 S.Ct. 684. teaches the advance which ured 26. Id. 86 S.Ct. 684. over the art. Indus., Af- Inc. v. Sales Helene Curtis (2d filiates, Inc., Cir. 1956).

although existing more than it does state once at the time the invention was implicitly in the constitutional ad- that advancement made and both are tied to statutory art,” in condi- sense is tied with the in that vances id. at at (emphasis added). tion of nonobviousness.27 The Commis- position up in sioner’s is best summed But, may major emphasis while the be argu- response at oral the Solicitor placed on the condition of non-obvious- ment in he asked this when ness, determi- we do not find that such a require- in advance the art is nation, ipso facto, de- also an ultimate is specified in ment additional to the three termination of advance- on the statutory statute, or is related to the statutory requi- ment. The other two requirement re- of non-obviousness. He sites, novelty utility, always and' have plied mere that in most situations thought separate been and inde- fact that the difference between pendent in conditions. If advance art and which that is described and claim- necessary useful art is standard to any particular application patent ed in patentability, logical sustain the more art, per se an advance in the be independent view is that statu- three but he also could envision situations in tory separate conditions are not from ad- necessarily true. that would not be very it, vancement but are the indicia of particular in the condition non-obvi- in Commissioner has conceded Note, ousness. 54 Geo.L.J. reply and elsewhere that a determi- cases, nation of most in unobviousness analysis Under this we have some dif- necessarily all, equivalent but not is ficulty perceiving how a claimed com- Appellee an advance in the art. asserts new, useful, which is and unob- congressional of the creation vious can still not constitute an advance statutory condition, third non-obvious- posi- in the art.28 The Commissioner’s ness, accomplished pur- the constitutional tion is that even if the three conditions pose patent provision, and incor- fulfilled, step backward in porates concept art. advance patentable. is not the relevant art Indeed, parallel Graham draws a close go does not “backward” when the three between the non-obvi- determination conditions are fulfilled. The Commis- ousness and advancement extent position appears sioner’s to be a contra- inquiry into non-obviousness diction in terms. “comports with the struc- constitutional tures,” If, Sim- by amicus, S.Ct. 684. as is asserted quite pivotal it ilarly, really contending clear that Graham, any condition non-ob- subject discussed in before pat matter entable, viousness, which was added to it must “advance art” in 1952, strongly equates statute itself sense that it is demonstrated to better be judicial with the of “inven- preceded condition than that which it in terms of tion,” previously long cost, performance, Both for- otherwise, so used. we must mulations, reject non-obvious- equate invention such a view.29 We do not ness, “place emphasis pertinent on the the constitutional standard of advance- g., 27. E. id. at at 692. cuit S.Ot. 684 found both obviousness and lack of utility, which seem to demonstrate requested 28. We file a the Solicitor possible. advance the art was supplemental point memorandum on this any memorandum failed to disclose case done, find which he do not holding subject a claimed compelling. example, For he relies patentable, was not it did not because upon Murray Texas, Inc. v. Con- Co. art, though advance even it was (5th F.2d 65 Cir. tinental Gin new, useful and nonobvious. Imperial Cutters, 1959), Inc. Stone (8th Schwartz, say, course, F.2d 425 Cir. This may support. secondary first case is factors distinguishable patent. evidencing consideration a combination one of Eighth statutory three And in the case the Cir- conditions. second not a advance the art was condition requirement that the with a ment patentablity no more than meant than the matter be “better” the constitutional standard advance- the word uses The Constitution art.30 “Progress”, utility by the ment was progress demonstrated is an advance- and compound prior art new, useful, the claimed by step over step and to ment through prop- its subject unobvious anthelmintic matter: non-obvious erties, regardless superi- the relative effectively promoted Progress is most ority respect. in this This seems to be by protecting the art those enrich who paragraph of the entire essence improve it. well Even as though as those who which the attacks as er- Commissioner good as are not their inventions Surely impute no roneous. we could really exists, as such inventors what opinion interpretation other to and being standing for rewarded not Judge we are satisfied that the District retrogressing, still or for ing but hav- knowledge in did that not mean advance something. system The invented unnecessary patentability.32 to was in- is not with the individual concerned progress ventor’s what technology. happening to Sufficiency Evidence

Rich, Principles Patentability, 28 (1960). Geo.Wash.L.Rev. In an to the burden effort overcome understanding This is our of the stand- similarity prior of structural with the interpreted ard of in advancement as art, Appellee specified complaint in in its Graham. ad- It is correct that Graham Court, had in as it done “tighten monished the up” Office, application Patent before the mildly applications, rebuked and compound that the claimed had unex- leniency applying him for the condi- pected utility First, evi- two areas. tions 103. at showing dence that was offered this not the creation 684. superior three requirement patentability of a new vermicide, prior of its art isomers as nor was it a mandate Patent for the Of- alleged utility unobvious in statutory fice enforce the conditions Second, prior references. evidence was and constitutional standard with the zeal patented offered antihisti- position manifest in the Commissioner’s greater supe- had mines and sedatives here. ority prepared from derivatives when analysis Judge’s containing Our than of the District the claimed opinion prepared shows when under the then-known statement sought place Ap- parties 30. The Customs Patent have each peals Thus, arguments consistently us. lias held that alternative before Appellee need that an advance was bet- asserts g., Applica- argument case, ter than the art. B. an made better evidentiary issue, Ratti, tion of to the while CCPA addressed compare argues ad And Hotchkiss v. the Commissioner Greenwood, (11 How.) 248, must be We need 52 U.S. vance “substantial.” establishing arguments our L.Ed. reach these view of the case disposition should invention condition the Court issue. wherein rejected dissenting note, however, Woodbury’s relied two cases Justice Commissioner, opinion “cheaper American test should be Indus., better,” Lambert Infra-Red Radiant id. Co. Inc., 1966), (8th Cir. Corp., Indeed, properly F. Motors if we Howe v. General understand (N.D.Ill.1967) Supp. position do not estab on the Graham Commissioner’s separate case, using lish advancement he is the advancement stand- unique design pat- them rather address ard in manner standard but such a non-obviousness, many ents would be invalid as well as selves language accepted patentable subjects, g., equating other thus two. e. toys. opinions Note, advances substantial 54 Geo.L.J. 1337- those about properly non-obviousness. addressed to tageous purpose, methodology. makes then the itself The Commissioner sufficiency unobvious, unnecessary regarding and it is claims several prove comparative of this evidence. tests that his is more use- Utility (a) as a Vermicide Direct purpose ful for the certain than close- phase Appellee’s evidence first ly compounds. related comparative tests between consisted of Ibid. three the claimed argu- The Commissioner makes two demonstrating superiority of isomers, First, ments directed at this evidence. utilized when argues comparative he that did the tests tests, by the These found vermicide. not afford for the Dis- a sufficient basis recog- universally District Court unequivocal holding trict Court’s that the following: (1) the nized showed the compound equal superior claimed was or equal compound in anthel- claimed was prior art isomers when utilized as activity worms33 mintic on ascaris a vermicide. prior one two of art isomers and the the effective than times more hundred noted, previously see we have As (2) compound isomer; third claimed the swpra, governed note 12 we are our compared with was the least toxic when findings review of factual Dis the isomers; the three compound the claimed by “clearly trict erroneous” Court demonstrated & n superior thera- standard of Rule 52 of Rules the Federal following peutic by comparative value of Civil Procedure. On the basis ratios, .01. 1: .45: .70: produced tests, comparative evidence say we cannot that District fully comparative This was holding erred in that the claimed com adopted by and led to the District Court equal superior “was or as a vermi the claimed Court’s conclusion that * * cide to the other three isomers compound superior “equal would be or F.Supp. reject at 628. Thus compared as vermicide” when argument. Commissioner’s first prior F.Supp. art isomers. at 628. Furthermore, found the District Court argument The Commissioner’s second prior that none of the art references is directed at the statement of the Dis- upon suggested azapheno- relied that the Judge just quoted, trict to the effect that (the thiazines prior claimed and its applicant prove an need not that his isomers) art as a would be useful by is more useful com- Thus, vermicide. the District Court con- parative testing prior where the art does cluded: suggest not prior When would be for art does not contain useful slightest purpose.35 suggestion a certain prop- that the erties of a claimed would support legal conclusion, of its

make it for useful a certain advan- upon District Court relied E. I. DuPont activity activity 33. Anthelmintic prior upon 35. The art relied did not dis- against which is directed worms which any specific utility property. close parasitic and, animals some azaphenothiazine The Rath (/., cases, humans, parasites e. intestinal compounds provides the indication sole such as ascaris worms. therapeutic utility prior disclosed compounds toxicity references. on the Rath’s are said tests were based largest distinguished by relatively dosage “to be low toxicity physiological art re- valuable effects isomers which was quired cajjacity stabilizing fifty per based on their before cent of the host vegetative system, destroyed. and central animals im- nervous tested were * * F.Supp. portance (quoting toxicity at 627 ratio is clear. April Application, 2,789,978, Thus, utility any drug the Rath No. is circum- 23, 1957). property No other scribed if severe illness or causes refer- in the other death. disclosed ences. * * * held, U.S.App. had Ladd, The examiner & De Nemours Co. v. unpatent- Appli- claims in issue were (1964) and 328 F.2d 547 D.C. lacking able, disclo- invention over the Lajarte, of De cation publication, because the sure of The Commissioner CCPA 826 appellant had failed to show applicability these cas- challenges unexpected compounds claimed had an expressly this court noted As es. property possessed DuPont, beneficial not involved there issue adjacent homologue the lower disclosed anticipation question U.S.C. under 35 publication. The examiner held under not of obviousness the affidavit did aid in confer- Moreover, section 103. since ring rejected patentability regard- involved, no issue was raised comparative claims because there was no necessity making homologue lower involving closely tests related yield results similar to the claimed

compound.36 La- the De We think that dosages. case, certain jarte however, conclu- supports the * n »***« Although Judge. sions of an- there was some doubt as is on burden to rebut involved, ticipation or obviousness was presumption unpatentability] [of 873, F.2d at court considered the by showing that the claimed com- both sections concluded: pound possesses unex- unobvious or pected properties beneficial not actu- the In total absence of evidence ally by possessed prior the homo- art the record to amber indicate that the logue. is glass It immaterial by Lyle prior art disclosed [the homologue may recognized not be expected would be to have reference] pur- to known be useful for the same insulating proper- desirable electrical pose possess properties or to the same ties, justification can we find for no compound. as the claimed placing applicant to burden on con- experiments duct to the in- determine (emphasis orig- Id. at 200-201 sulating properties glass of the colored inal). The rationale articulated for the by Lyle. disclosed rule was that the characteristics nor- mally by possessed members of a homol- Id. at 874. ogous generally same, vary- are series distinguishing In addition ing gradually from one member to the cases, argu- principal the Commissioner’s Thus, knowing prop- next. a chemist ment is that where an is at- erties of one member of the series would tempting to demonstrate that his claimed difficulty predicting prop- have little compound possesses novel or unobvious adjacent erties of the of members properties beneficial he must show that homologous series. Ibid. possessed such not in are fact progeny The Henze case and its have by Under reference. brought little clarification to the field of ruling Judge of the no District such 20, supra. See note law. The case showing required Appellee. of The applied itself its doctrine to the upon Application Commissioner relies of adjacent homologs. Isomerism, of as in- Henze, 37 CCPA 1009 present case, volved in is somewhat different; basically it a structural Henze, application dependent upon not for simi- classification compounds homology. larities as is of was the one which of Organic Chemistry higher homolog Boyd, next of dis- & Morrison prior publication. (2d 1966); Collins, supra closed in ed. note Judge gov- (1964). We do not found that believe distinguish opinion equates attempt DuPont Broion the two ernment’s sections light Application purposes, nor all do we find was erroneous Broion problem pertinent Brown, to the CCPA here. Although parties, not cited asserts at Riden, Application of as well think applicable isomerism Henze is bearing specific lan- has some homology points 50 CCPA as application 200- In Riden guage opinion, on the issue. F.2d at compounds useful language present, certain was for 201. Such pesticides. primary dis- reference subsequent of the decisions the basis use, Appeals, an insecticide or closed no either as and Patent Customs Court of general any purpose, Other other id. to the referred we think that however, references, obviousness, problem did disclose chemical fungicides. “presumption” The court specific or “infer- found from the derived ence” of obviousness in this case that There similarity present case compounds 8 differ of claims adjacent homologs. degree more than a matter compounds al. et [the Boehme cases, line of In one any properties. It reference] quite Henze should made it clear that has Boehme et al. does true that situation, even to its factual be limited teach have insecti- excluding question of to the extent of properties, cidal but there is no show- homologs non-adjacent applicat from its they there do not. Had been line of the court ion.37 In another eases property a new of the close- the definitions attach indicated that ly possessed by compounds not related relationship unimportant, ed analog, might a different case Druey, Application of * * * arise. Such evidence was not (1963); rather it is 50 CCPA 1538 forthcoming prosecution during the proximity relationship in terms Indeed, specification the ease. non-obviousness appellants’ application indicates that Lohr, as whole. compounds the Boehme et al. have the 2, 388, 1274 F.2d 389 n. 50 CCPA only properties same differ in de- (1963); Mehta, Application of F.2d 347 ** gree, *. 859, 864, (1965). 52 CCPA 1615 We original). (emphasis Id. at think these in the cases demonstrate that 764 genesis Thus, Riden for the Henze would seem to indicate rule was found that homology hydrocarbon prior alleged chains even was not of when the art possess alone, properties, to and that formulae the same in- no mechanistic indiscriminately applicant applied ques can cumbent make be to to a comparison possessed the tions of to see if it same chemical obviousness.38 (1965); Mills, 218, Application Lohr, Application F.2d 221- PA of of 281 1238 (C.C.P.A.1960); 388, 392, Application of El- 317 F.2d 50 223 CCPA 1274 (1964); Certainly prior 762, pern, art where references 51 CCPA 883 877, expressly utility Application Wagner, nar- a F.2d show same area, comparative pharmacological (C.C.P.A.1967). row 883-884 greater tests of effectiveness patentability. are the point this is a out that not We should Qua sine non of Nor prior disclosed the case where the art property a of the this case where the requiring the same thus opposite exactly claimed convincing by clear and to demonstrate Appli- prior that of art reference. compound has that claimed evidence his Petering, 676, cation of F.2d CC Ap substantially greater effectiveness. Lambooy, (1962); Application PA 993 McLamore, plication F.2d Of. F.2d 49 CCPA 985 Risse, (C.C.P.A.1967); Application of Wagner, Application supra, F. Ap (C.C.P.A.1967); F.2d 378 plication fact, 2d there is absolute- 883-884. Wagner, ly suggestion that it was obvious (C.C.P.A.1967) ; of Wiech prior Ap- chemist art isomers of (C.C.P.A. ert, F.2d 931-932 pellee’s have claimed Rosselet, 1967); Application (1965); Appli anthelmintic claimed 847, 850, CCPA 1533 specification. Ruschig, 343 52 CC cation of ap- requiring compara- However, not conclusion law not properties. this does tests to tive be correct. pear case since rule pesticidal patent was allowed as (b) Utility Indirect as Intermedi- suggested such use was use because ate reference; primary nor did the in the phase Appellee’s The second evi- obvious find it would have been comparative be- dence consisted of tests did from references which disclose other tween and its three of this uses. Because related Id. at 768. prior respect art isomers with to their that Riden difference we do believe prepara- as an value in the intermediate testing compels comparative to the extent patented products, tion of two seda- end sought. here patented tive and a antihistamine. This patented evidence disclosed when course, recognize, We compounds prepared were from the claim- demonstrating pat best method compounds they greater ed had a sedative entability Papesch progeny its greater and antihistaminic effect the existence of novel and unobvious therapeutic patented ratio than when the compre property through the use compounds prepared from were the three testing. comparative Neverthe hensive Appellee isomers. claims that less, record we are satisfied whole these tests demonstrate some novel Judge’s the District conclusion unique property in the claimed concerning comparative testing law and that one skilled in the art would applied as correct to the facts of ascribe to the claimed case. reach this conclusion on the contributing cause for the differences testing comparative basis of limited end-product results. although here, which, disprove it did not argument The Commissioner’s is tied the existence of the same evidentary in with his earlier contentions strongly suggests, by prior art, reason just There discussed. he obtained, vastly superior results comparing direct evidence derived those new results with the claimed did not suffi- property in the existence of a novel claim ciently property disclose a novel by limiting compound; ed Henze Since art. was in- facts, the Court of and Pat Customs sufficient, continues, the Commissioner done; ent what we granting basis meaning read of the additional Judge’s was the District reliance on the in this case. It should evidence adduced question aspect evidence in in this of the attempted Appellee recalled that appeal. here, The error the Commission- overcome the of structural burden obvi claims, er is a violation of the “best evi- through evidentiary ousness two show Relying dence” rule. eases, on a series of ings. place, In the first as we have indi argues the Commissioner the Dis- cated, evidence to show was offered new opinion trict Court violated the well- unexpected properties and and novel utili known rule that prop- evidence of new compounds. zation of the claimed Had unexpected possessed erties results we, only that been the evidence offered products directly final made from inter- Judge well, might and District the (i. e., mediates or derivatives required comparative have further test compounds) prove pat- is inadmissible to ing. Appellee went on to offer fur entability because of the remoteness of secondary ther evidence of a nature —the the relation back to the intermediate. utility indirect the claimed upon The Solicitor in his brief relies production as an for intermediate the genesis the rule which had Appli- its drugs greater known with effectiveness Finley, cation 36 CCPA then-existing prepared than when under Finley In the claimed com- methodology. light ap In of this dual which, was an ester when con- Judge’s proach salt, verted produced find the District to its we calcium high- Application of lubricating -is evidence admissible. with oils for additant Diamond, supra at 219- stability note the than er thermal Judge’s Certainly, if District examiner, the Board of 220. the references. Appeals, had application rule agreed of the evidence that the best and of the in conflict with views far removed been too itself was Appeals, justify attrib- Court of Customs and Patent salt calcium they hardly decision product cited his have uting the end predicated Having amply in admissibility case. Patent this compound.39 two on basis adopted rule in subsequently this Office say facts, the District cannot cases,40 Customs and the Court several finding Judge clearly erroneous in was has reaffirmed Patent secondary demon- also that the evidence cases.41 rule several recent unique and novel strated agree the Solicitor that with compound, per- for that a a sound basis rule has best evidence application ordinary skill art would son of reasonably But, field. the claimed com- ascribe to fast,” Applica rule is not “hard pounds contributing cause for the dif- Widmer, supra, tion of note product the end when ferences between great Secondary runs a evidence from the art and when made made relevancy failing the test of er risk of compound. from claimed We hold the admissibility proportion its remote in his District Court was correct both subject matter, from the claimed ness law; findings of fact and conclusions ques remoteness is a but the opinion we should make clear our on the basis tion of to be determined law respect predicated to this issue a whole. availability primary and sec- both We hold the sufficiency ondary evidence, and on the application of rule. in its was correct this evidence to show the existence compel conclusion. reasons Several property. and unobvious novel upon In all of the cases relied Solicitor, Affirmed. secondary was evidence secondary only presented, evidence Judge (dissenting): BAZELON, Chief Here, specified. use use however, second both direct Deere Graham v. John the Su- presented. ary In such a evidence was “inquiry preme Court stated that the trier of situation we think facts courts which the Patent Office secondary permitted to consider the patentability must be make as to must evidence. Since evidence as admissible intensity greater on the beamed with decided, of Cus this case the Court requirements of 103 [non-obviousness] expressly Appeals has toms and Patent * * opinion now relied review respectfully I submit secondary proposition Druey, CCPA F.2d 50 319 tion The court such evidence 39. indicated that Surrey, (1963); Application of 319 application 1538 if was able was admissible cert, denied, why F.2d 50 CCPA such tests were nec- to demonstrate essary 11 L.Ed.2d why pos- were no direct tests Judge relied District The 135. This modifica- sible. 174 from the evidence cases best subsequently two tion followed. has been Corp. here, v. Bren Union Carbide cited infra cases note 40. ; F.Supp. (D.D.C.1964) ner, 239 parte Ullyot, U.S.P.Q. 40. Ex Marzall, F.Supp. (D. v. Parker parte (P.O.Bd.App.1952); Parker Ex D.C.1950). agree but hasten to (P.O.Bd. Adams, U.S.P.Q. point fit within cases out App.1950). rule and evidence best framework disagreement Diamond, Application do circuit’s not indicate Widmer, (O.O.P.A.1966); with the rule. Applica (O.C.P.A.1965); 353 F.2d 752 Supreme ignored majority when has utilized as a vermicide. Thus I today opinion think the admonition. court’s fails to Court’s Supreme heed the admonition of the question There is no Court in Graham v. John Deere Co. structurally compound obvious. compound majority such concludes that requirements 103 if it can meet properties. I need not decide

has novel is correct because whether this conclusion adequate I was no believe there pos- in fact properties. sessed novel FREEMAN, Appellant, Walter M. proving method that a com- possessed prior testing. comparative Here art BRENNER, Edward J. Commissioner of majority compara- Patents, Appellee. concedes testing comprehensive. tive was not No. 20838. Furthermore, judge’s ability the trial United States Court of comparative evaluate the limited evidence District of Columbia Circuit. undoubtedly undermined be- his Argued Nov. lief that: 7,May Decided

When the art does not contain slightest suggestion prop- erties of a claimed

make it for useful a certain advanta- geous purpose, utility then the itself is

unobvious, unnecessary and it prove by comparative tests that his is more useful purpose closely for the certain than compounds. related Finally, judge only the district concluded “equal that the claimed superior as a vermicide” to the compounds. This is not a cut find- clear properties. of novel require majority fur- refuses to testing comparative this ease be-

ther appellee fur- “went on offer cause the secondary ther of a nature —the evidence indirect of the claimed production of as an for the intermediate greater drugs known effectiveness then-existing prepared than when methodology.” There is some secondary is ad- whether such is,

missible.1 But if I do not even up believe it makes lack of com- prehensive testing primary on the issue— Misegades, Mr. Keith Washington, D. compound’s C., appellant. novel g., Druey, Finley, e. 36 COPA 998 (1963) ; Application 237, 50 COPA 1538 Office notes determination Patent analogs and isomers. the District Court of non-obviousness subject How matter a of as whole. & Co. E. I. Nemours 14. See DuPont de ever, we these standards believe 246, Ladd, U.S.App.D.C. F.2d equally applicable segments of are Marzall, F. (1964); Parker v. overall determination such as structural Application Supp. (D.D.C.1950); of is obviousness. It clear now Papesch, CCPA and Patent Court of Customs (1963). apply “clearly would not a erroneous” Lohr, Application See, g., they of e. view that because are of the rule 388, 50 CCPA 1274 ais the determination of “obviousness” Applica- legal, not a factual conclusion. biological properties of the claim- cal and reliance on this case. Graham was the Judge compound, opinion dealing Rich stated: ed first authoritative with of obviousness under law, standpoint From the of It is clear from that unanimous de- all are a general cision that hard and fast rules of they inseparable; are one and same applicability impossible are to achieve thing. graphic formulae, Rather, under section 103. the section nomenclature, systems of chemical itself “lends to several in- basic factual study such classification quiries,” by Supreme enumerated etc., homology, concepts of isomerism, Court: symbols by are mere identified, classified, com- scope can be Under and content of pared. com- determined; But a formula is not a may while serve differences between the art and being identify patent- what is claim to the claims at issue are to be ascertain- ed, ed; deed as the metes and bounds of a ordinary and the level skill in thing identify plot land, pertinent Against resolved. patented background, not the formula but obviousness identified it. And nonobviousness of the thing patentability of does not de- is determined. similarity pend formula on of its Id. at 86 S.Ct. at It seems rather another elementary “background” to us that similarity former referred to for determination of obvious- to the latter. There in law basis clearly ness is not limited to the issue any making ignoring property similarity. structural Position isomer- comparison. such a An assumed simi- ism, here, as involved close focuses on larity comparison formu- based similarity which is to be taken give way lae must into consideration with all other relevant assumption is erroneous. measuring facts in the standard of ob- reasoning Id. at 391. The sound Ap- viousness g., under section 103. E. Papesch unanimously plication case been Wiechert, repeatedly reaffirmed the Court (1967); CCPA 957 Appeals.16 Mehta, and Patent Customs Doubt- 52 CCPA 1615 agree we must admonitions less think, teaching This, we is the against deciding questions of chemical of Graham. obviousness on the of structure basis agreeing While with this basic response arguments alone. approach Graham, factual the Com the Commissioner and those who assert missioner asserts that where structural structurally if obvi- assumed, “inquiry obviousness is by the ous,

Case Details

Case Name: Commissioner of Patents v. Deutsche Gold-Und-Silber-Scheideanstalt Vormals Roessler

Court Name: Court of Appeals for the D.C. Circuit

Date Published: May 8, 1968

Citation: 397 F.2d 656

Docket Number: 20182

Court Abbreviation: D.C. Cir.