Application of Koller

Decision Date24 January 1980
Docket NumberAppeal No. 79-589.
Citation613 F.2d 819
PartiesIn the Matter of the Application of Horst KOLLER, Alfons E. Hartl and Gerhard Kirchner.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Roger L. Browdy, Washington, D. C., attorney of record, for appellants.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents and Trademarks, Harry I. Moatz, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NEWMAN, Judges.*

BALDWIN, Judge.

This is an appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 1-3 and 5-14 in appellants' application serial No. 582,774, filed June 2, 1975, entitled "Method of Isomerizing Humulone to Isohumulone by Catalytic Acceleration with Metal Salts."1 The claims are rejected as anticipated under 35 U.S.C. § 102. We reverse.

The Invention

Appellants claim a method for producing isohumulone from humulone. Isohumulone is a chemical said to be useful as a tuberculosis retardant. It is also the essential part of "hops-bitters" used in the brewing of beer.

The claimed invention involves the steps of forming a liquid mixture of the reactant humulone, a sufficient amount of certain metal salts (the cation of which is a member of Group IIa or IIb, or the Iron group of the periodic table, or cerium and manganese) said to be catalytic or complex-forming, and a "liquid medium." The desired isomerization takes place at an "elevated temperature," desirably at the boiling point of the system, and at a pH preferably between 4 and 9.

Claims 1 and 13 are illustrative of the invention:

1. A method for preparing isohumulone products, comprising:
providing a mixture of (1) a salt productive in an aqueous medium of an anion and a cation, said anion being inert to the starting material and inert to the isohumulone products under the operating conditions of the present method, and said cation being an element selected from the group consisting of Group IIa or IIb elements, Fe group elements, cerium and manganese, (2) humulone or a humulone-containing material, and (3) a liquid medium, inert to the starting materials and to the isohumulone produced under the operating conditions of the present method, said liquid medium being one in which said salt dissociates to form said anion and said cation and said humulone or humulone-containing material dissociates to form humulate anion; and
isomerizing at an elevated temperature, at a pH below 9 and greater than that pH at which humulone forms humulate anion in solution;
wherein said salt is present in an amount sufficient to accelerate said isomerization.
13. A method of preparing isohumulone products, comprising:
combining (1) humulone or humulone-containing material, (2) a liquid medium inert to the reaction materials, in which both humulone and the salt to be used are soluble, and (3) a salt productive in said liquid medium of an elemental cation of an element selected from the group consisting of Group IIa and IIb elements, Fe group elements, cerium and manganese in an amount sufficient to accelerate isomerization; and
isomerizing at an elevate sic temperature, at a pH lower than about 9 and above 4.
The Rejection

The examiner rejected all of the claims under 35 U.S.C. § 102 as unpatentable in view of Worden, U.S. Patent No. 3,923,897, filed April 2, 1973. Worden discloses a similar process but in the main was utilized for its disclosure of Todd (Belgian patent No. 782,900 or U.S. Patent No. 4,002,683). Todd is admitted by all parties to be anticipatory of the claims (if the grandparent lacks § 112 description) especially in view of its discussion of the British equivalent to the grandparent application of this case.

Background

The ultimate issue in this case is whether or not the grandparent application provides a written description of the claimed invention in the manner required by 35 U.S.C. § 112. If it does, the decision of the board with regard to § 102 is improper since the filing date of the grandparent is prior to the effective date of any of the cited references.

The bone of contention between the parties here is the meaning to be assigned the term "liquid medium." The basic argument stated by the PTO is that the term varies in breadth from the grandparent to this case. The appellant maintains that the term is a broad term throughout.

The examiner, in his Answer, specifically discussed the term and his view of the etymology of the term:

The grandparent application discussed the process throughout the disclosure referring to "liquid medium", "solvent", "dispersing agent", etc. However, the specific disclosure with respect to the solvent system used discloses, "As a reaction medium one can in principle use water to which, however, a water-miscible organic solvent is added as solubilizer, since humulon is practically insoluble in water. As mentioned above, water-ethanol mixtures are preferred." None of the examples in the grandparent application use other than aqueous systems consisting of water or water in addition to a water-miscible solvent such as ethanol. It is only with the filing of the continuation-in-part application, the parent of this application, now U.S. Patent No. 3,952,061, that appellants added examples drawn to the use of water-immiscible solvent systems. Appellants recognized the fact that there was no support in the original application to claim the use of a water-immiscible system which they are now trying to recoup in view of the Worden patent disclosure. It is interesting to note that in the parent application, appellants cancelled all claims directed to the use of water-immiscible solvent systems in view of a rejection over theresic own priority documents which had become available as prior art. * * * Up until Worden published his invention, no one had ever isomerized the alpha-acids of hops resins to iso-alpha acids in non-aqueous systems. It was Worden that sic discovered the great processing benefits that accrued to the use of such a system. The use of aqueous systems in place of non-aqueous systems prior to Worden was unknown. Therefore, appellants cannot allege that the use of non-aqueous systems was implied in their original disclosure since it was not specifically used, disclosed or known in the art at that time. Appellants readily admit that they added new matter in the continuation-in-part application but are attempting to imply that it was there all the time. If it were present in the parent (grandparent of this application), the new matter would not have been needed nor the additional added examples. Appellants sic position is believed to be in error since (1) there is no specific disclosure of the use of non-aqueous systems, the contrary being true, and (2) it cannot be inferred that the use of non-aqueous systems would have been readily apparent to one skilled in the art prior to Worden since the use of non-aqueous systems was the invention of Worden and not known in the art at that time.

The board affirmed the rejection and in doing so stated:

The Examiner holds that the grandparent application does not contain a description of water-immiscible solvents as the liquid medium in which the isomerization is effected.
The appellants argue that the term "liquid medium" set forth in the grandparent application broadly covers all solvents in which the isomerization is effected and hence encompasses the water-immiscible solvents shown by Worden.
We have carefully considered all of the arguments but we are not convinced of reversible error in the Examiner's rejection. The instant application is not entitled to the benefit of the filing date of the grandparent application since it fails to satisfy the description requirements of 35 U.S.C. § 112 with respect to the disclosure of water-immiscible solvents. Although the grandparent application employs the term "liquid medium" for the isomerization of humulone, we do not find that it clearly and unequivocally describes the use of water-immiscible solvents. We find no delineation nor express description of any water-immiscible solvent either generally or specifically to serve as support for the present claims which encompass such solvent.
The use of aqueous or aqueous-alkanol media at 50°C or above, as disclosed in the earlier application, does not serve as basis for liquid medium such as methylene chloride indicated by Todd (cited by appellants) as suitable at ambient temperature. We find nothing in the grandparent to suggest the use of water-immiscible solvents or that isomerization can be effected below 50°C. The concept of isomerization taking place in the organic water-immiscible phase is nowhere suggested, taught or described by appellants prior to the filing of their parent application on May 30, 1973. Nor, as pointed out by the Examiner, would it have been obvious to employ such solvents at that time.
Considering the disclosure as a whole, one of ordinary skill in the art at the time of the filing of the grandparent application, would have been taught how to isomerize humulone by addition of polyvalent metal salts in aqueous or aqueous alkanolic media. The broad recitation "liquid medium" would have been construed by one skilled in the art from the disclosure as consisting of water or water to which a miscible organic solvent is added. The term as now interpreted by appellants is broader than that disclosed in the grandparent application.
The subsequent discovery by Todd, referred to in Worden, of employing water-immiscible solvents for the isomerization step merely confirms the unpredictable and unobvious nature of the liquid medium and as such, requires a clearer disclosure thereof than that which appellants provided in the grandparent. The finding by Todd, for which a patent was obtained, that water-immiscible solvents could be used for isomerization below 50°C cannot nunc pro tunc be considered as part of appellants'
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