APPLICATION OF HALLECK
| Decision Date | 12 March 1970 |
| Docket Number | Patent Appeal No. 8280. |
| Citation | 422 F.2d 911,164 USPQ 647 |
| Parties | Application of Frank E. HALLECK. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Ronald E. Lund, Minneapolis, Minn., attorney of record, for appellant. C. Willard Hayes, Washington, D. C., of counsel.
Joseph Schimmel, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.
Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation.
This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 3, 11-13, 17-19, 27-30 and 34 in appellant's application entitled "Method and Composition for Regulating Animal Growth."1 No claims have been allowed.
The invention, we are told, is based upon the discovery that relatively small amounts of peristalsis-2 inhibiting drugs, when properly administered with the water or feed of animals or as a separate material, either orally or parenterally, are effective for increasing the growth rate or increasing the feed efficiency of the animals and, in many cases, for improving both of these.
Preferred peristalsis-inhibiting substances are those which are highly specific for the smooth gastrointestinal muscles and which do not materially affect digestive enzymes or possess other deleterious side effects. Specifically disclosed are parasympatholytic agents, also referred to as anticholinergic agents, such as atropine, methantheline bromide, propantheline bromide, piperidolate hydrochloride, pipenzolate methyl bromide, as well as derivatives of some of these.
The invention is said to be applicable to all types of animals and poultry. Illustrative are claims 1 and 19:
Claim 34 is drawn to a feeding composition as is claim 1 and recites the growth-regulating substance as being "peristalsis inhibiting." Claim 3 is similar and recites additionally that the substance is "specific as to smooth gastro-intestinal muscles." Claims 11-13, 17 and 18 depend from claim 1 and recite the specific substances hereinbefore set out. Claims 27 and 28-30 depend from claim 19 and also set forth the specific agents used. The references are:
Schmidt reports the results of a study on the effect of atropine upon food and water intake in rats that indicated that such intake is depressed by atropine.
Archdeacon reports the findings of a study of the effects of several doses of atropine sulfate on food ingestion and water drinking in dogs, indicating that the atropine exerted a real food ingestion inhibitory effect as well as weight loss.
Merck discloses the specific parasympatholytic agents set out in the appealed claims and indicates that they are generally useful for relaxing the smooth muscles of the gastrointestinal tract. Atropine and atropine sulfate are described as having veterinary utility in relaxing the smooth muscles of certain animals.
Goodman discloses the pharmaceutical properties of atropine and methantheline bromide, stating specifically that atropine sulfate may be serviceable to control excess motor activity such as hyperperistalsis and that atropine has been employed in the treatment of obesity — "it probably reduces appetite by decreasing gastrointestinal activity * * *." Also disclosed is that methantheline bromide "delays gastric emptying, prolongs the intestinal transit time" in laboratory animals and reduces gastric secretion in fed and fasted dogs.
Journal of American Medical Association contains a report on drugs for obesity and states:
Hurrying the passage of partially digested food through the intestinal tract by means of cathartics at most interferes a little with caloric intake at the level of the intestine instead of at the table.
The examiner rejected the appealed claims under 35 U.S.C. § 112, second paragraph, as "too broad and * * * functional at the exact point of alleged novelty." The examiner felt that the claims were too broad because the disclosure made clear that to obtain a desired result each specific agent must be employed at specific and different proportions depending on the type of animal. The claim language "an effective amount" was considered to be functional and inadequately defined because of an insufficient number of examples to enable determination of proportions of a given agent. The claims were also considered broad enough to encompass the treatment of growing or mature animals.
The claims were further rejected under 35 U.S.C. § 103 as unpatentable over Merck. It was the examiner's opinion that since the reference disclosed use of the parasympatholytic agents for relaxing smooth muscles, and one is useful in both human and animals, administration of the same with or in feed would be an obvious routine procedure. Since the proportions are similar to those of appellant's examples, the examiner felt that Merck would inherently obtain the same results of growth promotion or improved feed efficiency.
The appealed claims were also rejected under 35 U.S.C. § 103 as unpatentable over Goodman in view of the Journal article and Merck....
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Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 70 C 369.
...to use" requirement of Section 112. In re Hitchings, supra, 342 F.2d at 87 and Riverton, supra, 433 F.2d at 1037-1038; In re Halleck, 1970, 422 F. 2d 911, 914, 57 CCPA 954. Finally, there is authority for the view that, to put it at its narrowest, as these cases see it, if an application di......
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Kao Corp. v. Unilever U.S., Inc., Civ. No. 01-680-SLR.
...experimentation." Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1383-1384 (Fed.Cir.2003) (citing In re Halleck, 57 C.C.P.A. 954, 422 F.2d 911, 914 (C.C.P.A.1970)). While the Federal Circuit particularly mentioned pharmaceutical type claims, the court concludes that this holdin......
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Geneva Pharmaceuticals v. Glaxosmithkline
...that a person of ordinary skill in the art could determine the specific amounts without undue experimentation. In re Halleck, 57 C.C.P.A. 954, 422 F.2d 911, 914 (1970). By its terms, a "synergistically effective amount" is a functional limitation. As explained in In re Swinehart, 58 C.C.P.A......
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Application of Watson
...the disputed phrase reasonably defines the metes and bounds of the invention to one of ordinary skill in the art. See In re Halleck, 422 F.2d 911, 57 CCPA 954 (1970); and In re Fuetterer, 319 F.2d 259, 50 CCPA 1453 (1963); cf. In re Caldwell, 319 F.2d 254, 50 CCPA 1464 (1963). We hold that ......