Application of Adams, Patent Appeal No. 6889.
| Decision Date | 25 April 1963 |
| Docket Number | Patent Appeal No. 6889. |
| Citation | 316 F.2d 476,50 CCPA 1185 |
| Parties | Application of Winifred June ADAMS, David Neville Kirk and Vladimir Petrow. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Bacon & Thomas, Washington, D. C. (Jesse B. Grove, Jr., Washington, D. C., of counsel) for appellants.
Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel) for the Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Associate Judges.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1 to 18 of appellants' application Ser. No. 580,448, filed April 25, 1956.
The invention relates to certain 4-chloro-3-oxo-?4-steroids of the androstane and pregnane series and the method of making them. The compounds differ from known 3-oxo-?4-steroids in having a chlorine atom attached to the number 4 carbon atom of the steroid nucleus.
Claims 1 and 10 are representative and read:
1. 4-Chloro-3-oxo-?4-steroids of the androstane and pregnane series having the general formula
10. A method for the preparation of 4-chloro-3-oxo-?4-steroids of the androstane and pregnane series, which method comprises chlorinating a 3-oxo-?4-steroid of the androstane and pregnane series having the general formula and treating the resulting 4:5-dichloride having the general formula
to remove the elements of hydrogen chloride therefrom.
No references are relied upon, the sole ground of rejection being that the disclosure of how to use the compounds is insufficient to satisfy the requirement of 35 U.S.C. § 112.
The appellants' specification, insofar as the disclosure of how to use the invention is concerned, states first:
"It is an object of the present invention to provide new 4-chloro-3-oxo-?4-steroids of the androstane and pregnane series which are of value on account of their biological properties or as intermediates in the preparation of compounds with useful biological properties."
Secondly, another portion of the specification states:
The examiner and the Board of Appeals discussed only the first quoted portion of the specification, and said nothing of the second.
As to the first, the board said:
The appellants rely on the disclosure of 4-chloro-analogues of known steroid hormones as indicating to one skilled in the art to which the invention pertains just what "biological properties" are contemplated. The solicitor objects to the reliance on this portion of the specification because "The point now raised was not raised in the Patent Office, though appellants had ample opportunity to do so." The disclosure relating to steroids having hormonal properties is said to be a new contention that cannot properly be raised here, citing In re Herthel, 174 F.2d 935, 36 CCPA 1095; In re Panagrossi et al., 277 F.2d 181, 47 CCPA 904.
We are of the opinion that appellants may rely on all of their specification even though the argument below centered about a portion of the specification which did not contain the term "hormone." There is nothing in the Herthel or Panagrossi et al. cases that precludes reliance on all of the specification to show that the disclosure is sufficient to satisfy the requirements of the first parargaph of 35 U.S.C. § 112. The specification was before the examiner and the board from its filing date, and they have ruled that the disclosure of the claimed invention therein is not sufficient "to enable any person skilled in the art * * * to make and use the same." 35 U.S.C. § 112. While appellants may not raise new issues or introduce new evidence on appeal, the evidence here, that is, the specification, has been in the case since April 25, 1956.
Considering the entire disclosure rather than the words "biological properties" only, it seems clear that one skilled in the art would know how to use the invention. Looking first to the method claims, there is no question that the method is operative and useful. The examiner and the Board of Appeals apparently were of the opinion that the method claims and the compound claims stand or fall together, since the two classes of claims have not been separately considered. However, the content of a sufficient disclosure need not be the same for a method as it is for a product. The...
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