In re Robins, Patent Appeal No. 8313.

• Citation: 429 F.2d 452,166 USPQ 552
• Decision Date: 13 August 1970
• Docket Number: Patent Appeal No. 8313.
• Court: United States Court of Customs and Patent Appeals
• Parties: Application of Janis ROBINS.

166 USPQ 552, 429 F.2d 452 (1970)

Application of Janis ROBINS.

Patent Appeal No. 8313.

United States Court of Customs and Patent Appeals.

August 13, 1970.

Donald M. Sell, St. Paul, Minn. (Kinney, Alexander, Sell, Steldt & DeLaHunt), St. Paul, Minn., attorney of record for appellant; John H. Lewis, Jr., John F. Witherspoon (Stevens, Davis, Miller & Mosher), Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents, R. E. Martin, Washington, D. C., of counsel.

Before WORLEY, Chief Judge, and RICH, BALDWIN and LANE, Judges, and RICHARDSON, Judge, United States Customs Court, sitting by designation.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals¹ affirming the rejection of claims 19-28 of application serial No. 199,644, filed June 4, 1962, entitled "Urethane Elastomers."

The claims on appeal are directed to a process for producing solid, non-cellular urethane polymers and to the resulting product. Appellant has discovered that "ionizable, halogen-free monoorgano mercuric compounds" are especially useful for catalyzing reactions between compounds having at last one reactive isocyanate group (-NCO) and compounds having at least one reactive hydroxyl group (-OH) to produce a solid, noncellular polyurethane product. Appellant's contribution resides entirely in the catalyst used, the process being otherwise old. Referring to the catalysts useful in his process, appellant's brief states:

This class of compounds may for convenience be characterized by the formula

RHgX

wherein R is an organo radical such as an alkyl or an aryl group joined directly to the mercury by a carbon-to-mercury bond, and X represents an organic or inorganic moiety joined to the mercury by some other bond than carbon * * *, e. g., oxygen in the case of a hydroxyl or acid moiety, nitrogen in the case of the ammonium salts, etc. By definition in the specification, compounds which are monoorgano-mercuric have "only one carbon-to-mercury bond" * * *. Emphasis ours.

Appellant's brief also explains some of the advantages of the claimed process as follows:

Appellant\'s invention is that certain classes of mercuric compounds selectively catalyze the secondary hydroxyl-isocyanate (OH-NCO) reaction, and promote it apparently to the substantial exclusion of the water-isocyanate (H2O-NCO) reaction when small amounts of H2O are present in the same reactive system with reactive OH groups * * *. Since these classes of mercuric compounds show no such selectivity when studying their effects in NCO-H2O or NCO-OH reactive systems separately * * *, this selectivity could not be predicted. This discovery is of far reaching commercial importance since it results in the ability to mix monomeric organic polyisocyanates and organic polymeric polyols with one another to provide normally liquid systems for the direct conversion into polymeric elastomers having predictable cure times and reproducible final properties even in the presence of considerable moisture * * *. This was not possible before because other prior known catalytic soluble compounds of metals were either found to indiscriminately promote the water-isocyanate reaction as well as the hydroxyl-isocyanate reaction or to be inhibited by water * *.

While the NCO-H2O and NCO-OH reaction competition is encouraged in the formation of polyurethane foams as the carbon dioxide released in the reaction, NCO + H2O NHCONH + CO2, constitutes the foaming agent, such competition is an anathema to the formation of non-cellular solid polyurethane rubbers or elastomers. In the latter instance the NCO + OH NHCOO reaction is required to the exclusion of the NCO-H2O reaction since the presence of gaseous reaction products causes bubbling or otherwise results in rubbers or elastomers having inferior physical properties * *. Emphasis ours.

Claims 19-26 are directed to the above-described process and claims 27 and 28 to the products of the processes of claims 23 and 25, respectively. Claims 19-21 and 27 are representative:

19. A process for accelerating the urethane linkage forming reaction between isocyanate and hydroxyl groups in the formation of a urethane product, said process comprising reacting an organic compound having at least one reactive isocyanate group with an organic compound having at least one reactive hydroxyl group in the presence of a catalytic amount of an ionizable, halogen-free, monoorgano mercuric compound having a single carbon to mercury valence bond.

20. The process of claim 19 wherein said monoorgano mercuric compound is a phenyl mercuric compound.

21. The process of claim 19 wherein said monoorgano mercuric compound is a phenyl mercuric salt of a carboxylic acid.

27. A product made in accordance with the process of claim 23.

There are two prior art rejections under 35 U.S.C. §§ 102 and 103, and at least one rejection under 35 U.S.C. § 112. The latter rejection, which we consider first, was stated in the examiner's Answer as follows:

Claims 19-28 stand rejected under 35 U.S.C. 112 on the grounds that same are not supported by the disclosure and are unduly broad.

It is the Examiner\'s position that appellant has not disclosed a suitable number of mercuric compounds falling within the scope of the claims to justify the language in the claims. Thus, the Examiner is at a loss to figure out what compounds appellant intends to include with the scope of the claims. In the specification, appellang discloses two compounds which are readable on the claims i. e., on which the claims read: phenyl mercury acetate and phenyl mercury hydroxide.² On page 5 of the specification, appellant discusses in broad terms the catalyst contemplated.³ Note that appellant states that the "mono-organo" portion of the catalyst may be "alkyl" or "aryl." The only example of "aryl" is phenyl. There are no examples of "alkyl." Note that no particular meaning for "aryl" has been ascribed to in the specification. * * * In this regard, the instant case is similar to In re Sus * * * 49 CCPA 1301, 306 F.2d 494, 134 USPQ 301 (1962). The board\'s attention is directed to the discussion at 134 USPQ at 304, column 2 and 305, column 1. Note also that in In re Sus several, and not just one example of "aryl" appeared in the specification. * * * The instant specification contains no examples of alkyl. * * * the mono-organo portion of the catalysts is not limited to "aryl" and "alkyl." Thus an sic, any? organic radical is included within appellant\'s recitations. * * *

The salt portion of the mono-organo mercuric salt has not been given any particular meaning in the specification. * * * Insofar as the recitation "salt of a carboxylic acid" in claim 21 is concerned, appellant has likewise failed to ascribe any particular meaning to the recitation. * * * In short, it is impossible to ascertain with any degree of reliability what compounds appellant intends to include within the meaning of the language presently appearing in the claims. In re Surrey * * * 54 CCPA 855, 370 F.2d 349, 151 USPQ 724 (1966).

* * * * * *

* * * In view of the fact that appellant has ascribed no particular meaning to the "mono-organo" and "salt" portions of his catalysts, it is submitted that the instant disclosure will not support the broad language of the claims.In re Sus, supra. Emphasis ours.

The board affirmed the examiner, stating in part:

The term "mono-organo" is indefinite, since it obviously is intended to include the "phenyl mercuric salt of a carboxylic acid" (claim 21), which has two organic groups, phenyl and carboxyl.⁴

Our review of the arguments presented leads us to agreement with the Examiner\'s conclusion that the claims fail to comply with 35 U.S.C. 112. The term "mono-organo" is indefinite for the reason we have given above. Furthermore, we consider the term "organo" to be far broader than is warranted by the compounds disclosed, even including those rather generally given in the paragraph at the top of page 5 of the specification. The field of organic chemistry is too immense and catalytic action too unpredictable to extrapolate phenyl even to aryl, much less to alkyl and then "organo." Precedent, in the form of such decisions particularly as In re Surrey supra * * * and In re Oppenauer, 31 CCPA 1248 * * * 143 F.2d 974, 62 USPQ 297 (1944), cited therein, are believed clear to this effect.

We find the examiner's Answer to be singularly unclear as to the particular requirement or requirements of § 112 which were thought not to have been met.⁵ The first, second and last sentences we have quoted from the examiner's Answer (see our emphasis) suggest that the specification was thought to be deficient (§ 112, first paragraph⁶) in some unstated respect. From the remainder of the examiner's remarks, however, it appears that he could not ascertain "what compounds appellant intends to include within the scope of the claims," which amounts to a contention that the claims are indefinite (§ 112, second paragraph⁷). The board contributes to our uncertainty by first "agreeing" with the examiner that "the claims fail to comply with 35 U.S.C. 112" (second paragraph? — emphasis ours) and then purportedly supporting this conclusion with observations about the immensity of the field of organic chemistry and the unpredictability of catalytic action (§ 112, first paragraph? — § 101?). From the board's second decision responding to a Request for Reconsideration, it is apparent that a § 101 rejection was not intended. There the board stated with respect to appellant's acknowledgment that "some chemist might find an inoperable organo-substituent":

Neither the Examiner\'s holding nor our decision was on this basis, but rather they were based on the lack of reasonable support for the immense breadth of the claim terminology. Emphasis ours.

If the examiner and/or the board intended a rejection under the first paragraph of § 112, it must be reversed inasmuch as the specification contains a statement...