Application of Wiechert

Decision Date19 January 1967
Docket NumberPatent Appeal No. 7636.
Citation152 USPQ 247,370 F.2d 927
PartiesApplication of Rudolf WIECHERT.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Michael S. Striker, New York City, for appellant.

Joseph Schimmel, Washington, D. C., (Jack E. Armore, Washington, D. C., of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 1-3 of application serial No. 98,026, filed March 24, 1961, for "1a-Methyl Steroids." Claims 11-18 and 25 have been allowed.

Introduction

The invention relates to certain 1a-methyl dihydrotestosterones and their 17-acylates which possess strong androgenic and anabolic activities. Claim 1, generic to all claims in the application, reads:

1. A compound of the formula:

wherein X is selected from the group consisting of hydrgen and halogen; wherein

and wherein R is selected from the group consisting of wherein acyl is derived from a lower aliphatic carboxylic acid.

Appealed claims 2 and 3 are directed to that embodiment of the invention wherein the substituent X in the structural formula of claim 1 is a hydrogen atom. All of the allowed claims are directed to compounds, or processes for making them, wherein X is a halogen.

The appealed claims were rejected by the examiner under 35 U.S.C. § 103 as obvious "from the standpoint of structural chemistry" in view of a sole reference:

Ringold et al. I 2,908,693 Oct. 13, 1959

In addition, the examiner cited the following patent "to show the state of the art":

Ringold et al. II 3,032,552 May 1, 1962 (Filed Apr. 5, 1955)

The examiner contended that Ringold I discloses dihydrotestosterones which are the 1-desalkyl derivatives of the compounds claimed by the appellant. Ringold I is concerned with a process for the production of 2-methyl-dihydrotestosterones and it shows compounds of the following structural formula as starting materials:

where R represents hydrogen or a lower alkyl group of less than 7 carbon atoms. The examiner stated that "the claimed compounds are so closely related to the prior art compounds * * * as to be obvious * * *."

Appellant submitted an affidavit by Langecker1 which shows, in the words of the examiner, that "1-methyl dihydrotestosterone is 7.5 times as strong anabolically and 7 times as strong androgenically as the prior art compound." Appellant contended in essence that the superior properties of his novel compounds impart patentability thereto under In re Papesch, 315 F.2d 381, 50 CCPA 1084.

The examiner considered the differences in properties shown by appellant's affidavit to be merely "differences of degree rather than of kind" and gave "no affirmative weight" to the affidavit. In addition, the examiner cited Ringold II as showing that the prior art was aware that the 1-methyl substituent would enhance the properties of the "parent compound." Ringold II relates to certain 1-methyl-19-nor-?4-3-ketones, which include 1-methyl-19-nor-?4-androstene-17ß-o1-3-one (1-methyl-testosterone), and the method of their preparation. The particular portion of Ringold II,2 designated by the examiner for the above purpose, states:

The novel compounds of the pressent invention are novel androgenic hormones having at least the anabolic activity characterizing testosterone and in some instances having enhanced or lesser androgenic effects. (Emphasis ours.)

The board, in affirming the examiner's rejection of claims 1-3, considered the claimed compounds are so closely related to the prior art compounds as to be obvious to those skilled in the art and found that the affidavit did not overcome "the presumption of obviousness." However, the board then added:

We further note that the compound set forth in column 1, lines 60 to 70 of the Ringold et al. reference Ringold I is a position isomer of both the instant 17-o1 and 17-ester compounds and there is nothing persuasive of record to indicate that the instant compounds are patentable thereover. Emphasis ours.

The "position isomer" of Ringold I, not specifically relied on by the examiner and noted for the first time by the board, has the following structural formula:

where R represents hydrogen or a lower alkyl group of less than 7 carbon atoms and R" represents hydrogen or an acyl group of a hydrocarbon carboxylic acid of 2 to 12 carbon atoms. A comparison of the above formula with that of claim 1 will show that the two differ mainly in the location of the CH3 group on the left ring of the 4-ring nucleus. Thus, the board termed the two "position isomers."

After the board's decision was rendered, the history of this application became considerably more complicated. The details of that portion of the prosecution are fully set forth in Part II of this opinion, infra. Suffice it to say for the present that counsel for appellant described it, during oral argument, as a "nightmarish" situation.

We have divided this opinion into two sections, in part for the reason that the argument on the merits and a reargument on the question of the composition of the Board of Appeals panel hearing the case were heard by different benches. We come now to "Part I," dealing with the "merits," that is to say the rejection of the claims.

I. Merits of the Rejections Based on Ringold I

As indicated above, the examiner rejected the appealed claims on the basis of the so-called 1-desalkyl derivatives of the claimed 1-methyl dihydrotestosterones shown in Ringold I. While the Board affirmed the examiner's reasoning, it made the additional observation that Ringold I discloses a position isomer of the claimed compounds and such isomer is also a bar to the patentability of appellant's claims. We will take up these issues in that order.

Appellant attempted to overcome the examiner's rejection by the submission of the Langecker affidavit. The examiner's Answer before the board admitted that the affidavit shows the claimed compounds to be about 7 to 7.5 times as effective as the prior art compound. However, the examiner, and the board, found the affidavit insufficient to overcome the reference since affiant has shown no new properties but merely an alleged improvement in the same properties. The improvement in the same properties possessed by the prior art compounds is labeled by the examiner and the board as "differences of degree rather than of kind."

Appellant contends that obviousness of a novel compound is to be decided not only from a comparison of its structural formula with that of the prior art compound, but from all properties of the compounds. In re Papesch, supra. Appellant then submits that the 7-fold androgenic activity and 7.5-fold anabolic activity shown for his compounds constitute "clear proof of unobvious and patentable greater effectiveness."

We think appellant's contentions have merit and the board's decision with respect to the rejection based on the 1-desalkyl compounds of Ringold I is therefore reversed.

As we indicated in In re Lohr, 317 F.2d 388, 50 CCPA 1274, it is possible to obtain a patent where the showing proves substantially greater effectiveness:

When a new compound so closely related to a prior art compound as to be structurally obvious is sought to be patented based on the alleged greater effectiveness of the new compound for the same purpose as the old compound, clear and convincing evidence of substantially greater effectiveness is needed. Emphasis added.

Again, in In re Grier, 342 F.2d 120, 52 CCPA 1081, we held that a large difference in degree (3-fold increase) was persuasive evidence, in the absence of countervailing evidence, of unobviousness. See In re Carabateas, 345 F.2d 1013, 52 CCPA 1386, where a showing of six and nine times effectiveness was held insufficient to establish patentability because the record there contained "other evidence" (our emphasis) which compelled a holding of obviousness.

In the case at bar, we are impressed by the 7-fold improvement in activity and, in the absence of valid countervailing evidence, we find the claimed compounds to be unobvious. There is nothing in any reference of record which would suggest any improvement, let alone a 7-fold improvement in activity.

The examiner apparently attempted to rebut the thrust of the affidavit by citing Ringold II as showing the art was aware that the 1-methyl substituent would enhance the properties of the parent compound. The statement in Ringold II relied upon by the examiner, quoted above, clearly does not support that proposition. In the first place, Ringold II only states that his compounds have "at least the anabolic activity" of the prior art testosterone and "in some instances * * * have enhanced or lesser androgenic effects." These phrases could hardly be characterized as teaching that these activities would be increased at all, let alone increased several fold. Furthermore, the cited statement in Ringold II refers to 1-methyl-19-nor-testosterone and there is no showing that such 19-nor compound and the claimed compounds behave in a similar fashion when substituents are added to or deleted therefrom. Therefore, Ringold II does not support the allegation of the examiner.

The solicitor's brief alleges certain inconsistencies between the two tables in the affidavit and between the affidavit and the application as originally filed. However, these alleged inconsistencies were not pointed out or adverted to by either the examiner or the board. Hence we regard this attack, on the credibility as opposed to the sufficiency of the affidavit, to be a new issue rather than a new argument and therefore not properly before us. In re Nygard, 341 F.2d 924, 52 CCPA 1032.

We turn now to the issue raised by the "position isomer" first noted in the board's opinion. The board's language, quoted above, in noting the isomer, appears to us to be a rejection of the appealed claims on the ground...

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