Application of Bergel

• Decision Date: 21 July 1961
• Docket Number: Patent Appeal No. 6676.
• Citation: 292 F.2d 955
• Parties: Application of Franz BERGEL and John Albert Stock.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

292 F.2d 955 (1961)

Application of Franz BERGEL and John Albert Stock.

Patent Appeal No. 6676.

United States Court of Customs and Patent Appeals.

July 21, 1961.

James W. Dent, Washington, D. C., and Albert L. Jacobs, New York City, for appellants.

Clarence W. Moore, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK.¹

WORLEY, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of claims 1 to 6, inclusive, of appellants' application, No. 415,964, for a patent on chemotherapeutic agents and processes for manufacturing them. Claims 1 and 3, which are typical of the appealed claims, are as follows:

"1. p-Bis-(2-chloroethyl)-aminophenylalanine.

"3. A process for the manufacture of p-bis-(2-chloroethyl)-aminophenylalanine which comprises heating a compound of the general formula:

in which R1 is selected from the group consisting of hydrogen and the COOC2H5 radical, R2 is hydrogen and R3 is selected from the group consisting of CHO and CH3CO radicals or R2 and R3 together represent the radical, with a chlorinating agent selected from the group consisting of phosphorous oxychloride and thionyl chloride."

All claims were rejected on the ground that the claimed compounds, and therefore the processes by which they are made, have not been shown to have "utility" within the meaning of the applicable statute (35 U.S.C. § 101); and claims 1 and 2 were further rejected on the ground that the compounds which they recite are unpatentable in view of the prior art.

The references relied on are:

Everett et al., Journal of the Chem. Soc. (London) 1949, Part III, pages 1972 to 1983; Harper et al. — Chem. Abstracts Vol. 45 (1951) Col. 7193.

The rejection of claims 1 and 2 on prior art will be considered first. The compounds defined by those claims are, respectively, p-Bis-(2-chloroethyl)-aminophenylalanine and its laevo isomer. The Harper et al. reference discloses p-diethylamino-phenylalanine. The examiner states that the compound of claims 1 and 2 is "a chlorine analog" of the Harper et al. compound, by which he apparently means that a part of the hydrogen of the Harper et al. compound is replaced by chlorine to form the claimed compounds. The examiner further noted that Everett et al. disclose compounds generally similar to those claimed by appellants and prepared by chlorination, and propose the use of such compounds in anti-tumor therapy. On the basis of those statements, which appear to be correct, the examiner concluded that the compounds of claims 1 and 2 represent "merely an expected modification of the Harper et al. compounds when viewed in the light of the Everett et al. teaching * * *." The same position was taken by the board.

The portion of the Everett et al. disclosure which is principally relied on in support of the rejection is the statement that "Many aryldi-(2 halogenoethyl) amines * * * show interesting biological properties, notably an inhibiting effect on the growth of certain transplantable rat tumors." The group of compounds thus recited is quite large, and Everett et al. do not indicate that all, or even most of them, have the stated property. Their disclosure, therefore, cannot properly be taken as a suggestion to prepare and test every conceivable compound of the group. It is true that Harper et al. disclose compounds which, by the substitution of chlorine, a halogen, for part of the hydrogen, may be converted to the compounds recited in appealed claims 1 and 2, but, in our opinion, such conversion would not be obvious in the absence of any suggestion in the prior art as to why it should be made. The examiner and the board were of the opinion that such a suggestion is found in the statement by Everett et al. that many of the halogen compounds to which they refer have an inhibiting effect on rat tumors. That might be more tenable if there were anything to lead one to suppose that the Harper et al. compounds had any tumor inhibiting tendency. In that case, the disclosure of Everett et al. that halogenated compounds of the same general class inhibited tumors might suggest the desirability of incorporating a halogen in the Harper et al. compounds, with a view of increasing that effect. However, the only use to which Harper et al. refer in connection with p-diethylamino-phenylalanine is as metabolic antagonist for the bacillus enconostoc mesenteroids, and even for that purpose they state that none of the compounds tested was inhibitory. We fail to see anything in that disclosure to suggest that the compounds disclosed, or any others based on them, would be likely to inhibit the growth of tumors in rats.

On this record, we find nothing which would suggest any combination of the disclosures of Everett et al. and Harper et al. to produce the compounds claimed here. The mere fact that it is possible to find two isolated disclosures which might be combined in such a way to produce a new compound does not necessarily render such production obvious unless the art also contains something to suggest the desirability of the proposed combination. The board's rejection on the prior art is reversed.

The board's second ground of rejection is on lack of "utility." Appellants' assertion of utility is:

"This

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