Application of Kalm

• Decision Date: 15 June 1967
• Docket Number: Patent Appeal No. 7698.
• Citation: 378 F.2d 959,154 USPQ 10
• Parties: Application of Max J. KALM.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

154 USPQ 10, 378 F.2d 959 (1967)

Application of Max J. KALM.

Patent Appeal No. 7698.

United States Court of Customs and Patent Appeals.

June 15, 1967.

Helmuth A. Wegner, Chicago, Ill., for appellant.

Joseph Schimmel, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for the Commissioner of Patents.

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

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the examiner's rejection of claims 1-3¹ as anticipated by certain prior art under 35 U.S.C. § 102(e).

The invention relates to particular morpholine derivatives of the formula

wherein R for purposes here is lower alkyl, being so defined in claim 1 and 2. Claim 3 is directed to the specific compound 2-cyclohexyl-3, 4-dimethylmorpholine. According to the specification, the compounds are useful as "selective central nervous system CNS depressants — being potent barbiturate potentiators." (Emphasis supplied.)

A brief chronology of the proceedings below will facilitate an understanding of the issue involved. The examiner originally rejected claims 1-3 as "obvious to one having ordinary skill in the art. 35 U.S.C. 103" in view of the Siemer patent.² Siemer discloses a process for the preparation of compounds of the generic formula

where R is phenyl or cyclohexyl, R1 is lower alkyl, and R2 and R3 may be hydrogen or lower alkyl,³ as well as a "one step" process for preparing compounds of the formula

According to Siemer, the compounds he discloses

* * * exhibit a marked psychostimulating and appetite reducing effect. The morpholines that are substituted in 2, 3 position, as for example 2-phenyl-3-methylmorpholine⁴ and 2-cyclohexyl-3-methylmorpholine have a most marked anti-depressive action. * * * (Emphasis supplied.)

The examiner predicated his § 103 rejection particularly on the latter compound, 2-cyclohexyl-3-methyl-morpholine, which differs structurally from the compounds of claims 1-3 in the absence of a methyl or other lower alkyl group in the 4-position of the morpholine nucleus.

In response to the examiner's rejection, appellant submitted an affidavit of a Dr. Drill (Drill I) under Rule 132, reporting the results of assays conducted to determine the effect of four compounds on the central nervous system. The compounds tested were the compound of claim 3 and 2 -cyclohexyl- 3 -methyl- 4 -octylmorpholine hydrochloride (the latter falling within the scope of claims 1 and 2), as well as the two specific compounds to which Siemer attributes marked antidepressive action. Drill concluded from the reported data that the reference compounds "2-cyclohexyl-3-methyl-morpholine and the corresponding 2-phenyl compound, Preludin, produced a significantly stimulating (95% Conf.) effect on the central nervous system," whereas the two compounds falling within the present claims "depressed the central nervous system."

Appellant also submitted his own affidavit, laboratory notebook exhibits, and biological testing reports under Rule 131, reporting that he had synthesized the 4-methyl compound of claim 3 and the 4-octyl compound heretofore mentioned, submitted them to pharmacological evaluation, and established "their depressant effect upon the central nervous system" in "standardized assays," all prior to July 23, 1958, the filing date of Siemer.

Subsequently, the examiner accepted the Drill I affidavit under Rule 132, finding it "to be sufficient to show a difference in kind in an evaluation of pharmacological properties as between the claimed compounds and the N-unsubstituted amines specifically disclosed by the reference," and conceded that "the instant compounds would be rendered unobvious by the Rule 132 affidavit and hence patentable. In re Papesch, 50 CCPA 1084, 315 F.2d 381, 137 U.S.P.Q. 43." However, the examiner then proceeded to reject claims 1-3 as "fully met by Siemer," stating:

* * * The reference is considered to so completely describe the claimed morpholines as to negate patentability within the meaning of 35 U.S.C. 102 (e). The reference discloses a narrow generic teaching of the claimed amines as well as a method for preparing the compounds. Also an N-homologue the examiner was here referring to the 2-cyclohexyl-3-methylmorpholine compound on which he originally predicated his § 103 rejection * * * is described specifically in example 7. These disclosures by the patentee, it is submitted, are sufficient to negate patentability of the claimed amines within the test laid down in In re Petering, * * * 49 CCPA 993, 301 F.2d 676, 133 U.S.P.Q. 275.

He accepted appellant's Rule 131 affidavit "to the extent that preparation of the compounds is described therein" and as evidence of "clear conception" of those compounds, but found it, for various reasons, to be "unacceptable to prove a successful reduction to practice," i. e., appellant had not satisfactorily established the "usefulness" of the compounds prior to the filing date of the Siemer reference.

The board agreed with the examiner's rejection of the claims under 35 U.S.C. § 102(e), finding that the

* * * reasoning of the court in In re Petering * * * is clearly applicable here to establish the anticipatory effect of the Siemer et al. disclosure.

It also agreed with the examiner that it was necessary for appellant to show that he knew of a use for his compounds prior to the filing date of Siemer in order to overcome Siemer as a reference since, according to the board, the patentee discloses "therapeutic utility" for the compounds; that appellant's Rule 131 affidavit was inadequate to establish that he had found a use prior to the filing date of Siemer; and that, as a consequence, appellant had not shown he was prima facie the first inventor of the claimed subject matter.

A rejection under 35 U.S.C. § 102(e) for anticipation, such as made by the Patent Office in the present case, necessarily implies that the invention sought to be patented has been "described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent," and therefore is not "new" — that there are no differences between what is claimed and what is disclosed in the prior art. Even where there are differences, "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103.

In making his original rejection under § 103, the examiner was faced with readily apparent differences between the subject matter "sought to be patented" and the prior art, viz. the claimed compounds are central nervous system depressants while the disclosed compounds of Siemer are central nervous system stimulants. The examiner, considering those differences, found appellant's narrow group of compounds to be unobvious, § 103, to one of ordinary skill in the art, notwithstanding the Siemer reference.

Bearing that determination in mind, it...