Application of Jones, Patent Appeal No. 4975.
| Decision Date | 22 May 1945 |
| Docket Number | Patent Appeal No. 4975. |
| Citation | 149 F.2d 501 |
| Parties | Application of JONES. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Caesar & Rivise, of Philadelphia, Pa. (Charles W. Rivise and A. D. Caesar, both of Philadelphia, Pa., of counsel), for appellant.
W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.
This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner rejecting all of the claims, 1 to 9 inclusive, of an application for a patent for "Compositions of Matter and Methods of Making Said Compositions," as unpatentable over the prior art, which is as follows:
Henry, "Berichte," Volume 2, page 637;
Behrend et al., "Annalen," Volume 344, pages 24 and 25;
Taube et al., 1,841,458, January 19, 1932;
Skrbensky, 2,051,460, August 18, 1936;
Murphy, 2,135,987, November 8, 1938;
Dustman, 2,213,809, September 3, 1940.
The involved claims are all product claims and read as follows:
The application relates to compositions of matter used as insecticides, fungicides and growth regulants for plants.
The Henry reference, the date of which has not been given, discloses the chemical compound, benzyl thiocyanate, which has the formula CH2CNS, and is prepared by reacting benzyl chloride with potassium sulfocyanate.
The Behrend et al. reference, which likewise is without date in the record, discloses the compound benzyl isothiocyanate, bearing the formula CH2-NCS. It is prepared by heating benzyl thiocyanate.
The Taube et al., Skrbensky, Murphy and Dustman references disclose the use of various thiocyanates as insecticides and for improving plant life.
There is nothing in the prior art to indicate that insecticides or plant-improving compounds containing thiocyanates or isothiocyanates necessarily or inherently are fungicides.
The examiner rejected all of the claims as unpatentable over the Henry, Behrend et al. or Taube et al. references. Claims 4 to 6 were further rejected on the Taube et al. and Murphy patents, for the reason that the compounds of those patents are shown to have insecticidal and fungicidal properties. Claims 7 to 9 were further rejected on the Dustman and Skrbensky patents for the reason that those patents show that organic thiocyanates are known to have growth-regulating properties.
Claims 4 to 9 were also rejected as unpatentable over claims 1, 2 and 3, for the reason that one skilled in the art would know that naphthyl methyl thiocyanates could be used as insecticides and growth-regulating agents, as shown by the Taube et al., Murphy, Dustman and Skrbensky patents. The examiner also held claims 4 to 9 unnecessary and merely leading to multiplication of claims.
Claims 2, 5 and 8 were further rejected by the examiner for the reason that they do not read on the elected species, appellant having elected the species specific to isothiocyanates. Should generic claim 1 be allowed it would carry with it the allowance of claim 2.
The Board of Appeals affirmed the examiner's decision in general language, stating, however, that it had not overlooked the superiority of appellant's compounds over those of the references from the standpoint of utility in killing insects. In this connection it stated: "However, the difference in potency referred to in appellant's brief is not so startling as to indicate any new or unobvious result, but would appear to be only such a difference as might be expected between compounds even in the same homologous series."
The prior art nowhere discloses appellant's products. Therefore the sole issue here is whether or not it would be obvious for a skilled chemist to produce appellant's compounds in view of such art.
The benzyl thiocyanate of the Henry reference differs from the 1-naphthyl methyl thiocyanate of the application in that in the former CH2SCN is bonded to a single benzene ring while in the latter the CH2-SCN is joined to a double condensed benzene ring.
The Behrend et al. benzyl isothiocyanate differs from the 1-naphthyl methyl isothiocyanate of appellant in that in the former CH2-NCS is bonded to a benzene ring while in the latter CH2NCS is bonded to a double condensed benzene ring.
The claimed compounds contain the naphthyl radical, a derivative of naphthalene, while the compounds of the Henry and Behrend et al. references contain the phenyl radical, a derivative of benzene.
It was held below that one skilled in the art would realize that the compounds of appellant could be prepared by the method disclosed in the Henry or Behrend et al. publications, and that it would not involve invention to make such experiment and find it successful. The claims here, however, are not for a process. They are product claims, and those products are new.
While it is true, as stated by the tribunals below, that naphthalene closely resembles benzene in behavior and that similar types of derivatives from the former may be similar to the...
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