Application of Larsen, Patent Appeal No. 6686.

• Court: United States Court of Customs and Patent Appeals
• Writing for the Court: SMITH, (dissenting)
• Citation: 292 F.2d 531
• Parties: Application of Aubrey A. LARSEN.
• Docket Number: Patent Appeal No. 6686.
• Decision Date: 24 October 1961

292 F.2d 531 (1961)

Application of Aubrey A. LARSEN.

Patent Appeal No. 6686.

United States Court of Customs and Patent Appeals.

July 21, 1961.

Rehearing Denied October 24, 1961.

Laurence & Laurence, Washington, D. C. (Dean Laurence and Herbert I.

292 F.2d 532

Sherman, Washington, D. C., of counsel) for appellant

Clarence W. Moore, Washington, D. C., (R. E. Martin, Washington, D. C., of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK.¹

WORLEY, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of claims 11 to 20, inclusive, and 22 of appellant's application, No. 653,289, for a patent on organic compounds and processes of preparing them. All the appealed claims are directed to processes, the claims to the compounds having been allowed.

Since the issue is essentially one of law, the scope of the claims is not material, and it is unnecessary to reproduce any claim here.

The references relied on are

Taub et al. 1,022,645 April 9, 1912. Guest 2,561,468 July 24, 1951.

The claimed processes involve the production of esters of substituted benzoic acids by reacting an alkali metal salt of such an acid and an appropriate halohydrin or epoxide. The compounds reacted are conceded to be old. The Taub et al. patent shows the production of an ester by reacting an appropriate alkali metal salt of a substituted benzoic acid and a halohydrin. The Guest patent discloses the use of an epoxide for esterification of the benzoic acid derivative and, as noted by the board, was relied on mainly in connection with claim 22 which involves the use of an epoxide.

In view of the obviously close parallel between the claimed processes and those of the references, we agree with the conclusion of the Patent Office that if the compounds recited in appellant's allowed claims were disclosed in the prior art it would be obvious to a person of ordinary skill in the art to prepare them by the processes set forth in the appealed claims. It is unnecessary to discuss this point further since appellant does not dispute it, but states in his brief that

"* * * For purposes of this appeal, appellant concedes that, if the products made by his process were not novel and patentable, the process might not be patentable over the references cited."

The issue presented here, therefore, is whether a process for making a patentable compound is, ipso facto, a patentable process.

There is substantial discussion in the briefs here as to whether the claimed processes would be obvious in view of the prior art, but, as we understand the board's decision, the principal basis of rejection is that appellant's invention resides solely in the product and is not properly defined by the process claims. This appears from the following statement in the board's opinion:

"* * * If in the instant case the process claims do not point out the invention, they might properly be subject to this criticism. * * * The major question is whether such claims define his, or any, invention and this we think is a proper subject of inquiry by the examiner.

* * * * * *

"* * * Therefore under the above stated principles of patent law, we feel compelled to hold that appellant\'s invention does not reside in the process of making an ester. * * *"

While the entire record of appellant's application has not been presented here, it is clear from the examiner's answer to the appeal that the allowance of the claims to the compounds was based on the fact that they possessed unique, and

292 F.2d 533

presumably unexpected, properties. Since there was nothing to indicate that the compounds, when made, would have these properties, it was not obvious to make the compounds. In such a case the allowance of claims to the compounds must depend on the proposition that it was unobvious to conceive the idea of producing them, within the meaning of Title 35 U.S.C. § 103

Under these circumstances, however, the inventive concept is that of the compounds themselves. When they have been conceived, the processes by which they may be prepared may or may not be obvious. If, as is the case here, such processes, given the idea of the compound, are obvious then it is apparent that the invention resides in the compounds per se and is not properly defined as a process.

The fallacy of appellant's contention that "if a product be patentable, a claim to a process for producing such product is patentable" is apparent upon considering the not infrequent situations in which a new product may be made by any one of several obvious processes. It seems clear that in such a case each of those obvious methods could not properly be considered patentable, and yet there is logically no more reason for allowing claims to any one than to the others. The fact that an applicant sees fit to disclose a particular one of the processes should have no bearing on its patentability.

A case in point is Wirebounds Patents Co. et al. v. H. R. Gibbons Box Co., 7 Cir., 25 F.2d 363, 365. In holding the method claims there involved unpatentable, the court said:

"Moreover, the method patent contains nothing but the natural and obvious method of producing the box. * * * It cannot be considered invention to describe and claim a process, or to produce a machine, or formulate a method which any successful mechanic would produce when required to effectuate a given result. * * * "

Another situation somewhat similar to the instant one was involved in In re Kulieke, 277 F.2d 948, 951, 47 CCPA 943. There claims had been allowed on a railway coupler knuckle of specific construction and appellant sought the allowance of claims on a core mold assembly designed for casting the coupler. In refusing the claims on the ground that the invention resided solely in the coupler, the court said:

"From our consideration of the record, we agree with appellant that there is but a single invention here involved, but we disagree with the conclusion he would have us draw from this fact. In our opinion this single invention is found in the coupler knuckle per se. We have found nothing about the mold and core assembly, as claimed, which indicates that it would be unobvious to one having the ordinary skills in this art to form such an assembly to produce the case knuckle. * * * Once the engineering design of the casting has been determined, the mold and cores will necessarily follow that design."

While that case relates to the mold for making a product rather than a process of making it, the same reasoning is applicable in both cases. When the sole inventive concept resides in the product the claims should be limited to product claims.

Appellant relies heavily on decisions in Canada and Great Britain which allegedly hold process claims allowable under...