Application of Hoeksema

• Decision Date: 04 June 1964
• Docket Number: Patent Appeal No. 7050.
• Citation: 141 USPQ 733,332 F.2d 374
• Parties: Application of Herman HOEKSEMA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

141 USPQ 733, 332 F.2d 374 (1964)

Application of Herman HOEKSEMA.

Patent Appeal No. 7050.

United States Court of Customs and Patent Appeals.

June 4, 1964.

George T. Johannesen, Kalamazoo, Mich. (Eugene O. Retter, Kalamazoo, Mich., of counsel), for appellant.

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

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

WORLEY, Chief Judge.

Hoeksema appeals from an affirmance by the board of the rejection of claims 1 to 11, 13 to 15 and 17 to 19 of his application¹ for a patent on "Composition of Matter and Process."

The invention relates to the antibiotic dihydronovobiocin and its preparation. According to appellant's specification novobiocin exists in two crystalline forms with only one structural formula, but somewhat different physical properties. Appellant explains that Form 1 is readily absorbed into the blood stream from aqueous vehicles, but Form 2 is not. Since administering novobiocin in aqueous vehicles is said to be desirable, Form 1 is more desirable than Form 2. However, the application states that Form 1 "has been difficult to prepare in good yields since crystalling Form 2, the more stable form, became available."

Claims 1 and 13 read:

"1. Dihydronovobiocin.

"13. A process which comprises contacting an organic solvent solution of 7-4-(carbamoyl-oxy)-tetra-hyro-3-hydroxy-5-methoxy-6, 6-dimethylpyran-2-yloxy 4-hydroxy-3-4-hydroxy-3-(3-methyl-2-butenyl)-benzamido\'-8-methyl-coumarin with hydrogen in the presence of a hydrogenation catalyst effective to hydrogenate an ethenoid double bond and recovering the formed 7-4-(carbamoyl-oxy) tetrahydro-3-hydroxy-5-methoxy-6,6-dimethylpyran-2-yloxy-4-hydroxy-3-4-hydroxy-3-(3-methylbutyl) benzamido-8-methylcoumarin."

The references are:

Peck 2,498,574 February 21, 1950. Hochstein et al., 76 J. Am. Chem Soc. 5080-2, October 1954. Berger et al., 73 J. Am. Chem. Soc 5295-7, November 1951. Flynn et al., 76 J. Am. Chem. Soc 3126, June 1954.

The Peck patent discloses the conversion of streptomycin salts to the corresponding dihydrostreptomycin salts by reacting an aqueous solution of the streptomycin salt with hydrogen in the presence of a catalyst of a noble metal such as platinum, palladium or platinum oxide. The dihydro compounds are said to be approximately as active antibiotically as the streptomycin salts and are equally suitable for clinical application. Peck also teaches that the dihydro salts are more stable in the presence of substances capable of reacting with carbonyl groups and also are stable for twenty-four hours in a designated buffered aqueous solution while the corresponding streptomycin salts are completely inactivated therein.

Hochstein discloses two antibiotics, magnamycin and magnamycin B, both elaborated from a strain of streptomyces bacteria, and states that the "Catalytic hydrogenation of Magnamycin B shows the presence of two carbon-carbon bonds." The article specifically describes the preparation of tetrahydromagnamycin B by hydrogenating magnamycin B in anhydrous ethanol in the presence of a palladium-charcoal catalyst.

Berger discloses isolation of crystalline antibiotics from three strains of streptomyces, the antibiotics being identified as X-206, X-464 and X-537A, which are said to be organic acids. The Berger article describes hydrogenation experiments carried out with the antibiotic X-206 with prehydrogenated platinum oxide as a catalyst, which resulted in the absorption of 1.2 moles of hydrogen in methanol and 3 moles of hydrogen in acetic acid. The products are said to be amorphous and biologically inactive.

Flynn discloses hydrogenation of erthromycin in the presence of a platinum catalyst with glacial acetic acid as the solvent, and states that one mole equivalent of hydrogen is absorbed.

The board stated:

"* * * Each of these references discloses hydrogenation of streptomyces-derived antibiotics such as streptomycin, magnamycin and erythromycin to produce the corresponding hydrogenated compounds. Peck in hydrogenating streptomycin obtained a compound of greater stability. The procedure carried out in these references is the usual one with the aid of catalysts and solvents. The examiner held that since it was routine practice to hydrogenate various antibiotics, particularly in order to determine structural configuration, appellant\'s hydrogenation of novobiocin was obvious and routine."

On that ground the board affirmed the examiner's rejection of process claims 13 to 15 and 17 to 19, but disagreed with the ground of rejection of product claims 1 to 11, saying:

"* * * As to these product claims, it would appear that the Examiner is rejecting because he considers the manner in which the product was obtained is obvious which is contrary to 35 U.S.C. 103. Ex parte Burtner et al., 89 USPQ 547, and Ex parte Mowry, Patent No. 2,617,831 are illustrative of this Board\'s position on the independence of product and process claims for purposes of determining patentability."

Thus the board regarded the examiner as considering dihydronovobiocin obvious because it was known to hydrogenate antibiotics generally, i. e. to determine the presence of unsaturation, and novobiocin was a known antibiotic.

The board substituted its own ground of rejection of the product claims, under Rule 196(b), stating that

"However, insofar as this case is concerned novobiocin is a known material and its structure is set out by formula on page 1 of the specification. This is necessary background for claims 1 through 11; otherwise they would be indefinite if not meaningless in "novobiocin." However, the structure of novobiocin clearly indicates to the chemist that it may be hydrogenated because of the carbon to carbon unsaturation which also happens to be the type of unsaturation hydrogenated by Hochstein et al. * * *"

The board thus regarded dihydronovobiocin to be obvious in view of the structure of novobiocin and the conventionality of hydrogenation. In other words, the presence of unsaturation in novobiocin suggested hydrogenation thereof because other unsaturated antibiotics have been similarly hydrogenated in the prior art.

We agree with appellant that the board erred in two respects, namely, in assuming that the structure of novobiocin was known to the prior art, and in neglecting to consider the properties of dihydronovobiocin vis-a-vis novobiocin.

We observe that, at the time appellant made his invention, those skilled in this art knew that novobiocin existed and that it possessed certain antibacterial properties; its structure, however, was unknown. As we have pointed out, from the teachings of the cited references, a person skilled in this art would have been expected to know also that other antibiotics had been hydrogenated, and that such hydrogenation had produced varying results with respect to the bacterial activity, stability and absorption characteristics of the resulting product. Those facts do not, we think, support the board's conclusion that it would be obvious that hydrogenation of novobiocin would produce the claimed novel compound which appellant produced and which he found to possess antibacterial activity and stability in aqueous vehicles, as well as to be readily absorbed with unusually high blood levels following either oral or parenteral administration.

In In re Viktor Papesch, 315 F.2d 381, 50 CCPA 1084, this court said:

"* * * a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is patented is not the formula but the compound identified by it. And the patentability of the thing does not depend on the similarity of its formula to that of another compound but of the similarity of the former compound to the latter. * * *"

Comparing the compounds involved, and not merely their structural formulae, the unexpected properties of dihydronovobiocin persuade us that that product is not obvious in view of the cited prior art. Thus we are obliged to reverse the board's rejection of product claims 1 to 11.

Process claims 13 to 15 recite the production of...