Application of Grier

• Decision Date: 11 March 1965
• Docket Number: Patent Appeal No. 7258.
• Citation: 342 F.2d 120,52 CCPA 1081
• Parties: Application of Nathaniel GRIER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

52 CCPA 1081, 342 F.2d 120 (1965)

Application of Nathaniel GRIER.

Patent Appeal No. 7258.

United States Court of Customs and Patent Appeals.

March 11, 1965.

Joseph Hirschmann, New York City, for appellant.

Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

ALMOND, Judge.

Nathaniel Grier appeals from a decision of the Board of Appeals affirming the examiner's rejection of claims 1-3, 9, 16, 17 and 19-21 in his application¹ for a fungicidal agent. Claims 1 and 2 are illustrative of the compounds sought to be patented.

"1. A salicylate of a carboxylic organic acid ester of an 8-hydroxyquinoline.

"2. A compound of the formula

wherein R is the acyl group of an organic carboxylic acid, and X is a member of the group consisting of hydrogen, lower alkyl, and chlorine."

Claim 16 is illustrative of the composition claims.

"A pharmaceutical preparation for the treatment of fungal infections comprising a pharmaceutical carrier mixed with a compound as defined in claim 1."

Appellant states that his compounds may be used for "athletes foot" or as industrial mildewproofing agents. It is admitted that the use of 8-hydroxyquinoline, also known as oxine,

as an antifungicide is well known, but it produces irritation when used on the skin. Appellant describes his inventive concept as follows:

Appellant, however, conceived the idea that by blocking the hydroxyl and amine (pyridine) groups of the oxine, the irritant action could be reduced or eliminated while still retaining the antifungal activity; that is, by forming an ester with the OH group (by reaction with an organic carboxylic acid) and by neutralizing the basic amine moiety (by adding on an acid to form a "salt"). However, when appellant attempted to prepare salts of esters, he found that with the many salifying acids that he tried, no reaction would take place. Thus, as described in the specification * * the benzoic acid ester of 8-hydroxyquinoline could not be made to form a salt with malonic, maleic, citric, tartaric, phthalic, B-resorcylic and gentisic acids under a variety of conditions, despite the fact that 8-hydroxyquinoline itself readily forms salts with these acids, the salts being well-defined and isolatable.

Appellant found, however, that salicylic acid was an outstanding exception and formed salts not only with the preferred benzoic acid ester of 8-hydroxyquinoline but also with its other esters. Even phthalic acid, which is closely related to salicylic acid, failed to form a salt with 8-benzoyloxyquinoline.

As stated in appellant's specification and noted by the board, 8-benzoyloxyquinoline salicylate, one of appellant's preferred species, has an order of activity at least three-fold that of the parent compound, 8-hydroxyquinoline.

The examiner allowed claims to 8-benzoyloxymethylquinoline salicylates and di-8-quinolinylphthalate di-salicylate but rejected generic claims and species claims to 8-benzoyloxyquinoline salicylate and 8-benzoyloxychloroquinoline salicylates. The several grounds of rejection applied against the claims will be discussed separately.

Inadequate Disclosure

At the threshold of our consideration of the issues here presented, it appears necessary to make disposition of certain contentions set forth in the solicitor's brief and asserted in argument before us.

It is contended that the appeal of claims 1 and 2 must be dismissed because appellant's reasons of appeal do not allege error in the rejection of these claims as lacking support in the specification and the rejection must therefore stand. It is further contended that if the appeal is not dismissed as to claims 1-2 and claims 13-14 as lacking adequate support in the specification, the rejection of these claims should be affirmed because "although reason of appeal No. 8 alleges error in such rejection of claims 13 and 14, the brief on behalf of appellant does not controvert or discuss the rejection."

In support of these contentions, the solicitor cites In re Gruschwitz et al., 320 F.2d 401, 50 CCPA 1498 and In re LeBaron, 223 F.2d 471, 42 CCPA 956.

The record discloses that the examiner rejected claims 1-2 for failure to properly define the invention; claims 1-2 as unpatentable over the art of record, and claims 1-2 and 13-14 as lacking adequate support in the specification. The board sustained the examiner as to claims 1 and 2 but reversed as to claims 13 and 14.

For reasons hereinafter to appear, it is not necessary to discuss further claims 13 and 14 in connection with the above noted contentions.

We turn to the asserted inadequacy of the reasons of appeal as they relate to claims 1 and 2. Analyzing the reasons of appeal cumulatively, we find assignments of error amply embracing rejection as unpatentable over a combination of references; claiming subject matter that would be obvious from the references; as being unduly broad and failing to point out the invention; in sustaining rejection of certain claims for reasons applied to others and rejection as unpatentable over a specific reference.

In our judgment the reasons of appeal are sufficiently broad in scope and adequate to bring within our purview and comprehension every facet of the matter before us essential to the attainment of the ends of justice. The reasons of appeal are sufficiently replete with properly cognizable substance to enable us to determine, if necessary, whether or not the board committed error in rejecting claims 1 and 2 as lacking adequate support in the specification. Inadequate support of the specification may be another way of saying the claims are unduly broad. Both rejections have their basis in 35 U.S.C. § 112. The specification and the claims constitute the heart of the record. They are before us. Courts do not decide in a vacuum nor are they called upon to close their eyes to the obvious.

There is no possible basis for comparison of the scope and substance of the reasons of appeal here with the total lack of those attributes in the reasons of appeal with which the majority of this court dealt in In re Gruschwitz, where neither specifically nor cumulatively were any reasons assigned by appellant. In the so-called reasons of appeal the claims were merely numerically identified in association with the allegation that the board had committed error in its rejection. As in In re Timmerbeil, 320 F.2d 413, 50 CCPA 1514, no reason whatsoever was assigned except a statement, totally devoid of a modicum of specificity, that the board had committed error.

Notice of appeal was given on May 1, 1963. On the same date appellant filed further request for reconsideration relating to claims 13 and 14 calling the board's attention to the examiner's rejection of these claims and the board's blanket affirmation of the decision of the examiner with no mention of claims 13 and 14 in the discussion of the rejection in the board's opinion.

By letter dated May 29, 1963 the board took cognizance of the allegations and prayer of the petition for reconsideration and corrected its decision by certifying its reversal as to claims 13 and 14. The language concluding the decision was changed from "AFFIRMED" to "AFFIRMED-IN-PART." This action was taken by the administrative officer by order of the board. The board recognized and stated that it was bereft of jurisdiction to further consider the appealed matter by reason of the previous filing of the notice of appeal with its consequent transference of jurisdiction to this court, citing In re Allen, 115 F.2d 936, 28 CCPA 792. The board stated that "it may, for purposes of appeal to the Court, correct any typographical errors, obvious omissions, etc." The solicitor contends that this action by the board taken after the notice of appeal was ultra vires on its part and that it could not have the effect of reversing the rejection because the decisions of the board theretofore rendered did not mention this rejection but affirmed the examiner generally which is to be construed as an affirmance of the rejection.

We have no quarrel with the principle enunciated in In re Dreshfield, 110 F.2d 235, 27 CCPA 1013; In re LeBaron, supra, and In re Rogoff, 261 F.2d 601, 46 CCPA 733, cited by the solicitor. These cases are completely inapposite to the situation here presented.

The board did nothing more than to exercise a purely ministerial function in its administrative capacity. It simply corrected nunc pro tunc an error of omission plainly obvious to it. It made no new or different determination of an issue. It exercised no judicial function. It merely certified the fact of an unrecorded determination made when the matter was within the full competence of its jurisdiction. It was well within its province in so doing. Claims 13 and 14 were allowed and are therefore not embraced by the appeal before us.

In allowing claims 13 and 14 the board necessarily reversed the examiner's rejection that the disclosure was inadequate. It seems clear that the ground of rejection as applied to claims 1 and 2 was also reversed since there is no basis for distinguishing between the two sets of claims. However, since the record is not clear on this point, we will consider the rejection as applied to claims 1 and 2.

The examiner's answer states the rejection as follows:

"The basis for this rejection is that the specification only prepares the unsubstituted or lower alkyl substituted organic carboxylic acid ester quinoline salicylates. Nowhere in the specification is there any indication of the preparation of the chloro derivative. While it is recognized that the original claims constitute part of the specification and claims 13-14 were directed to specific chloro derivatives of the claimed compounds, there is no basis for these claims in the specification."

In objecting to the lack of a working example describing the formation of a chloro-substituted...