Application of Herr

• Decision Date: 11 July 1962
• Docket Number: Patent Appeal No. 6811.
• Citation: 50 CCPA 705,304 F.2d 906
• Parties: Application of Milton E. HERR.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

50 CCPA 705, 304 F.2d 906 (1962)

Application of Milton E. HERR.

Patent Appeal No. 6811.

United States Court of Customs and Patent Appeals.

July 11, 1962.

Eugene O. Retter, Washington, D. C., for appellant.

Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, RICH and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

WORLEY, Chief Judge.

This is an appeal from the decision of the Board of Appeals affirming the Primary Examiner's rejection of all three claims in appellant's application for patent.¹ No claims were allowed.

Claim 1 is representative and reads:

"1. 9(11)-dehydro-17-alkyltesto-sterones represented by the following formula

wherein R\' is selected from the group consisting of hydrogen and the acyl radical of a hydrocarbon carboxylic acid containing from one to twelve carbon atoms, inclusive, and wherein R is a lower-alkyl group containing less than three carbon atoms, and the 3-pyrrolidyl enamines thereof."

The single reference relied on is:

Herr et al. 2,769,019 October 30, 1956 (Filed July 9, 1953)

The claims are directed to derivatives of testosterone having the formula given in claim 1. Testosterone has the following formula, the numbering of the ring carbon atoms being indicated:

As can be observed from the above formulae, the claimed compounds differ from testosterone in the presence of a double bond between the 9 and 11 carbon atoms and the presence of "a lower alkyl group containing less than three carbon atoms" on the 17 carbon atom. Also the hydroxyl group may be acylated by a hydrocarbon carboxylic acid. In claim 3 the hydroxyl group is acylated and the alkyl group is a methyl radical, while in claim 4 the hydroxyl group is not acylated and the alkyl group is a methyl radical.

The Herr et al. patent discloses a compound of the formula:

wherein R is "selected from the group consisting of hydrogen and the acyl radical of an organic carboxylic acid." The patentees state:

"The compounds of the present invention have interesting and important physiological properties, their androgenic and anabolic activity being among the most important. These compounds also are useful in the preparation of other physiologically active compounds. * * *"

The following résumé of the proceedings in the Patent Office is set forth to aid in better understanding the issues:²

Claims 1 through 3, all the claims then in the case, were finally rejected as unpatentable over Herr et al. Appellant filed, under Rule 132, 35 U.S.C.A.Appendix, an affidavit of one Dr. Stafford which compared the oral and parenteral activity of the Herr et al. compound and the claimed compound with standard compounds. The standard used for the oral test was 17-methyl testosterone which has the formula:

while the standard for parenteral activity was testosterone propionate. The results of the tests are summarized in the following table:

                                           Activity
                  Type of test               Herr et al.            Appellant
                  --------------------------------------------------------------
                  Oral Anabolic             inactive             16% of standard
                  Parenteral anabolic       21% of standard      63% of standard
                  Parenteral androgenic     13% of standard      20% of standard
                  --------------------------------------------------------------
                

The examiner thereupon indicated that the claims were allowable, stating:

"The amendments, filed May 1, 1958 and June 25, 1958 and the affidavit filed May 1, 1958 place the case in condition for allowance."

and suggested claim 4 for the purpose of interference.

An interference was declared, but on motion by appellant was dissolved on the ground that the other party could not make the count.

Upon resumption of ex parte prosecution, the examiner withdrew allowance of claims 1 to 4 and reinstated the rejection on Herr et al., stating:

"The allowance of the claims (Paper No. 12.) was improper and inadvertent since it was predicated on the showing in an affidavit under Rule 132, filed May 1, 1958, Paper No. 6. This affidavit demonstrates a superiority of the claimed compounds to the compounds of the reference as to oral anabolic and parenteral anabolic and androgenic activities. However, the instant specification discloses no utility for the claimed compounds other than as intermediates for the production of other compounds having oral anabolic and androgenic activity. Therefore the affidavit cannot be accepted and the rejection on Herr is still tenable. * * *"

In addition, the examiner was of the opinion that the compounds of the reference are "the lower homologs of the claimed compounds."

Appellant cancelled claim 2 and submitted a second affidavit stating that prior to the filing of the parent application he knew that the claimed compounds had oral anabolic and...