Application of Eynde

• Decision Date: 19 July 1973
• Docket Number: Patent Appeal No. 8934.
• Citation: 178 USPQ 470,480 F.2d 1364
• Parties: Application of Hector Alfons Vanden EYNDE et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

178 USPQ 470, 480 F.2d 1364 (1973)

Application of Hector Alfons Vanden EYNDE et al.

Patent Appeal No. 8934.

United States Court of Customs and Patent Appeals.

July 19, 1973.

Alfred W. Breiner, Arlington, Va., attorney of record, for appellants.

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

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, sustaining the rejection of claims 16-21 of appellants' application¹ as based on a specification which fails to satisfy the requirements of the first paragraph of 35 U.S.C. § 112. We remand this case to the board for the reasons and purposes hereafter set forth. The most difficult aspect of this appeal is the determination of the propriety of the board's refusal to consider certain patents and publications submitted by appellants subsequent to the board's original decision as an accompaniment to a request for reconsideration. To fairly explain the issues before us and our resolution of them, we initially recount the positions of the principals as developed below.

THE PROCEEDINGS BELOW

The Invention

The claims on appeal are all chemical compound claims. Claim 16 defines the genus and reads as follows:

16. A fluoro-alkyl hydrazine corresponding to the following formula:

(X-CF2)n -CH-NH-NH2 R

wherein:

X is a member of the group consisting of a hydrogen atom and a fluorine atom,

R is a member of the group consisting of a hydrogen atom, lower alkyl or phenyl, and

n is a positive integer from 1 to 25 inclusive.

The specification characterizes the invention as relating to "new fluoro-alkylhydrazines" and "more particularly," "a process for the preparation thereof." Indeed the specification for the most part discusses the manner of making the claimed compounds. As for utility, the specification states the following:

The fluoro-alkyl hydrazines according to the present invention are important starting materials for the synthesis of several organic compounds such as 1-fluoroalkyl-2-pyrazoline-5-one colour couplers, which form magenta azomethine dyes on colour development of exposed light-sensitive silver halide materials with aromatic primary amines.

Proceedings Before The Examiner

That statement of utility was the focus of the examiner's rejection of the claims first under both sections 101 and 112, and later under section 112 alone. The examiner considered the statement "vague and indefinite," and generally regarded it as insufficient to teach one skilled in the art how to use the claimed invention. The examiner questioned the manner in which the claimed hydrazines could be converted to color couplers and the manner in which the so-formed couplers could be used to yield magenta dyes on color development.

Appellants contended that one skilled in the relevant art would have been able to make color couplers from the hydrazines and would have known how to use the couplers in color development. Appellants generally argued that the utility requirements and all disclosure requirements of the patent laws were satisfied.

At one point during prosecution, appellants introduced a page of a treatise on photographic chemistry by Glafkide,² the relevant portion of which reads as follows:

(d) Pyrazolines. These magenta couplers with the structure

are very widely used for colour films. * * *

The pyrazolones are prepared by hot condensation of a phenylhydrazine Ar-NH-NH2 with a keto compound such as acetoacetic ester CH3-CO-CH2-CO-O-C2H5 in the presence of water and alcohol. They are insoluble in water, but soluble in caustic soda. Their sulphonated derivatives are soluble.

The simplest coupler is 1-phenyl-3-methyl-5-pyrazolone. The aryl sulphonated compound is prepared from sulphophenylhydrazine. With diethyl-p-phenylene diamine, a magenta dye is obtained with the formula:

Before coupling, the keto group -CO-CH2-is isomerized to the enol form-C(OH)

Appellants stated that:

Glafkide teaches the "classical" method of producing magenta color couplers with a pyrazolone structure by means of the hot condensation of a hydrazine with a carbonyl containing compound such as a substituted acetoacetic ester. Thus, the method of converting the fluoroalkyl hydrazine of the present invention to 1-fluoroalkyl-2-pyrazoline-5-one color couplers is well known in the art.

The examiner first commented on Glafkide in his Answer stating:

The Glafkide publication does disclose the reaction of a phenylhydrazine with a keto compound to give a pyrazolone which then couples a primary aromatic amine to give a magenta azomethane compound, but the instant hydrazines are not phenylhydrazines and there is no assurance that the instant hydrazines would so react or what the reaction conditions would be. Emphasis in original.

The examiner continued to hold that the specification disclosure of utility is insufficient, although he limited the basis of the rejection to the first paragraph of § 112.

In a reply brief following the Examiner's Answer, appellants expressly acknowledged the examiner's comment regarding the Glafkide publication. Appellants argued:

This statement would have greater significance if not for the expressed and implied indication by appellants that the conditions used with a phenylhydrazine when applied to the fluoroalkyl-hydrazines will result in a useful product.

Proceedings Before The Board

The board quoted the statement of utility appearing in appellants' specification and phrased the appellants' position as follows:

It appears to be appellants\' view that, in the light of the Glafkide publication, one having ordinary skill in the art would know how to use the claimed compounds as starting materials to produce the 1-fluoroalkyl-2-pyrazoline-5-one compounds, and furthermore would know how to employ the latter for the suggested purpose in photographic emulsions, all without further disclosure than that quoted above.

The board agreed with the examiner's view of Glafkide stating:

We note * * * that the starting hydrazines and compounds produced by the Glafkide publication are different from those which would be employed and produced according to appellants\' suggestion, in that they have aryl groups in place of the fluoroalkyl groups. We do not find that one skilled in the art would be able to predict with certainty that the fluoroalkyl compounds would react identically and under the same conditions as the aryl compounds of Glafkide, nor is there evidence in the record that they in fact do so.

In support of this conclusion the board made reference to a patent³ (hereafter the Eynde patent) issued on an application⁴ (hereafter the Eynde application) filed by appellants on July 14, 1965, two days subsequent to the filing date of the application involved in this appeal. The Eynde patent discloses in detail the manner of using the fluoroalkyl hydrazines to form color couplers and the use of such couplers in color development.

It was presumably intended that the Eynde application be filed concurrently with the present application, and the present specification as originally filed made express reference to the Eynde application for a disclosure of the preparation of color couplers. However, the Eynde application was filed later for one reason or another, and reference thereto was deleted from the present application. The board was therefore aware of the Eynde patent which matured from the Eynde application and of the fact that appellants contemplated the methods disclosed therein as the means for converting the fluoroalkyl hydrazines to color couplers.

The board held as follows:

We note that in * * * the Eynde patent the conditions actually used are not the same as in the publication. The patent in all cases conducts the reaction in the presence of acetic acid; the reference employs a hot condensation in the presence of water and alcohol. It therefore is not even apparent from the record before us that the claimed compounds can in fact be used in the same manner as the known compounds of Glafkide * * *. Nor do we find that it would have been obvious that the fluoroalkyl pyrazoline-5-one compounds would be usable in the same manner in photographic compositions. * * * At the most, it might appear "obvious to try" the reactions and conditions indicated by the Glafkide publication upon appellants\' novel hydrazine compounds, but this does not appear to be the standard by which sufficiency of disclosure under the first paragraph of 35 U.S.C. 112 is determined. We will therefore sustain the rejection for lack of sufficient disclosure of how to use the compounds.

We observe at this point that the examiner had not based his conclusions on the differences between the Eynde patent reaction environment and that disclosed in Glafkide. That was clearly a rationale new to the proceedings. We cannot ascertain the extent to which the board's rationale influenced its affirmance. For example, we do not know whether the board considered it an alternative basis for affirmance or whether the board regarded it is providing essential support to the examiner's reasoning.

Appellants filed a request for reconsideration of the decision of the board accompanied by a number of patent and publication references offered for the purpose of demonstrating the knowledge possessed by those skilled in the art. The board noted that the references were not "urged upon it in the brief," and since the references were not of record prior to the board's original decision, the board refused to consider them. The board adhered to its original decision.

In response to the board's refusal to consider the reference material, appellants contended that the board erred in its assessment of appellants' position, noted above, to the effect that "in the light of the Glafkide publication," one skilled in...