Application of Gardner, Patent Appeal No. 8923.

Decision Date14 June 1973
Docket NumberPatent Appeal No. 8923.
Citation475 F.2d 1389,177 USPQ 396
PartiesApplication of John Nicholson GARDNER.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Alan D. Lourie, Philadelphia, Pa., of record, for appellant; William A. Smith, Jr., Washington, D. C., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jack E. Armore, Washington, D. C., of counsel.

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

MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals, affirming the rejection under the first paragraph of 35 U.S.C. § 112 of claim 2 of appellant's application, serial No. 679,670, filed November 1, 1967, for "Guanidinoalkylbenzodioxan Derivatives."1 We reverse.

THE INVENTION

The application is directed to a class of guanidinoalkyl-1:4-benzodioxan compounds which are useful as antihypertensive agents. Claim 2 reads:

2. A compound selected from the group consisting of a base of the formula:
and a nontoxic, pharmaceutically acceptable acid addition salt thereof, wherein R1 is a member of the group consisting of hydrogen, methyl, methoxy, chlorine and bromine.
THE REJECTION

The examiner's rejection under 35 U. S.C. § 112 was couched in general terms, the claim being described as "too broad" in view of the lack of support in the specification for all the compounds encompassed by the substituent group R1 and the floating position thereof. Express mention was made in the Answer of the lack of a "showing that all of the compounds * * * would possess the asserted utility."

The board stated:

We think the Examiner has made it clear, considering his various statements in context, that his rejection is based upon the requirements of the first paragraph of 35 U.S.C. 112 as to the "written description of the invention" and "the manner of _ _ _ using it."

So interpreted, the rejection was sustained "for the reasons set forth in our decision in the parent case Serial No. 251,471 * * *." The fact that the present claim was considerably reduced in scope from the parent claims was not felt to render the prior reasons inapplicable. In this earlier opinion, made of record here, the basis for affirming the 112 rejection was applicant's failure to establish that the substituents on the basic guanidinoalkyl-1:4-benzodioxan nucleus had no profound effect on the antihypertensive activity of the compounds. Certain disclosure in that specification was deemed adequate support for the examiner's doubts as to the universal applicability of the asserted utility.

OPINION

We approach the rejection as structured by the board and argued by the solicitor. Accordingly, the issues lie in whether the separate but related description and how-to-use requirements of the first paragraph of 35 U.S.C. § 112 have been satisfied.

Claim 2 covers a total of 17 compounds and in fact delineates a subgenus of the broad class of guanidinoalkyl-1:4-benzodioxan derivatives disclosed in the application. Only three of the five possible R1 substituents are specifically exemplified and substitution in these examples is always in the 7-position of the benzodioxan nucleus. As pointed out by the solicitor at oral hearing, no explicit language is found in the main body of the specification corresponding to the subgenus defined by the claim.

But we see no need for either additional representative examples or more definite language to satisfy the description requirement. Claim 2, which apparently was an original claim, in itself constituted a description in the original disclosure equivalent in scope and identical in language to the total subject matter now being claimed. See In re Anderson, 471 F.2d 1237 (CCPA 1973). Nothing more is necessary for compliance with the description requirement of the first paragraph of 35 U.S.C. § 112.

The major question centers around the sufficiency of the disclosure with respect to the how-to-use requirement. The primary contention of the Patent Office is that reasonable basis exists for doubting that all of the compounds encompassed by claim 2 have the asserted utility, i. e. antihypertensive activity. As in the parent case, appellant's own disclosure is said to provide the basis for doubt.

Adequate support for the Office's assertions is an essential requirement for sustaining his rejection under In re Marzocchi, 439 F.2d 220, 58 CCPA 1069 (1971) and In re Cook, 439 F.2d 730, 58 CCPA 1049 (1971). If such support be sufficient, appellant's failure to provide rebuttal evidence would require affirmance. In re Fouche, 439 F. 2d 1237, 58 CCPA 1086 (1971).

The case thus turns on the pertinent disclosures in the specification. The first statements concerning utility read:

The generic group of compounds of this invention is characterized by having the basic guanidinoalkyl-1,4-benzodioxan nucleus which imparts antihypertensive activity to such compounds. The substituents on the basic structure may be any of those common to the art, such as those disclosed in U. S.
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  • Application of Wertheim
    • United States
    • United States Court of Customs and Patent Appeals
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    ...is clearly irrelevant since claim 4, an originally filed claim, is its own written description in the appealed application. In re Gardner, 475 F.2d 1389, 177 USPQ 396, rehearing denied, 480 F.2d 879, 178 USPQ 149 (Cust. & Pat.App.1973). The issue is whether the Swiss application describes t......
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