Application of Lemin

• Decision Date: 23 January 1964
• Docket Number: Patent Appeal No. 7083.
• Citation: 326 F.2d 437,51 CCPA 942
• Parties: Application of Alan J. LEMIN, Arnolds Steinhards and Gerald A. Boyack.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

51 CCPA 942, 326 F.2d 437 (1964)

Application of Alan J. LEMIN, Arnolds Steinhards and Gerald A. Boyack.

Patent Appeal No. 7083.

United States Court of Customs and Patent Appeals.

January 23, 1964.

George T. Johannesen, The Upjohn Co., Kalamazoo, Mich. (Eugene O. Retter, Washington, D. C., of counsel), for appellants.

Clarence W. Moore, Washington, D. C. (Joseph F. Nakamura, Washington, D. C., of counsel), for the Commissioner of Patents.

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

ALMOND, Judge.

This is an appeal from a decision by the Board of Appeals affirming the final rejection of appellants' patent application.¹ The invention relates to promoting the growth of plants by stimulating the plants as well as protecting them from damage by parasites such as fungi and bacteria. The active compound employed is N-lower-alkanoylsulfanilic acid hydrazide. The claims drawn to a method of treating plants have been allowed, as well as a compound claim and two claims drawn to a dry composition of the active compound and a soluble salt. The rejected claims are all drawn to a composition of matter. Each of the rejected claims, except claim 22 recites three ingredients: an N-lower-alkanoyl-sulfanilic acid hydrazide, a carrier, and a surfactant.

The issue is whether the claimed compositions are obvious in view of the prior art.

Claim 10 is representative and reads:

"10. A composition suitable for promoting growth of plants and for protecting them from damage by parasitic plant pathogens which comprises a parasitic plant pathogen inhibiting and plant growth promoting amount of a N-lower-alkanoylsulfanilic acid hydrazide having the formula

wherein R is selected from the group consisting of hydrogen and an alkyl radical containing from 1 to 4 carbon atoms, a carrier, and a surfactant capable of reducing the surface tension of water to less than about 40 dynes per centimeter in concentrations of less than about 1 per cent."

Claim 22 reads:

"22. A composition of matter suitable for promoting growth of plants and for protecting them from damage by parasitic pathogens which comprises a parasitic plant pathogen inhibiting and plant growth promoting amount of an N-lower-alkanoylsulfanilic acid hydrazide having the formula

wherein R is selected from the group consisting of hydrogen and an alkyl radical containing from 1 to 4 carbon atoms, inclusive, dispersed in an inert pulverulent solid having a particle size less than 50 microns."

The specification states that the hydrazides "are effective for stimulating growth of plants and for the control of parasitic pathogens that infect plants. These hydrazides have both systemic and topical action. Systemically they promote the growth of plants independently of whether the plants are infected or not. These compounds can be applied to foliage, roots, seeds, or other parts of the plant."

The references relied on below are:

Rothmann (German Patent) 901,650 January 14, 1954

Curtius et al., "Journal für Praktische Chemie," December 1926, Vol. 112, pages 117-137.

Biniecki et al., Chemical Abstracts, 1955, Vol. 49, Co. 8168(h).

The Board of Appeals was of the opinion that the Curtius et al. and Biniecki et al. references "are cumulative to Rothmann who discloses the compounds in various media and also teaches the therapeutic use thereof."

The Rothmann reference discusses an improvement of the compounds of Curtius et al. which latter compounds were used to treat animals infected with pneumococci. The improvement of Rothmann consists of making hydrazides which are within the scope of the hydrazides recited in the instant claims. The compounds are said to be "hardly soluble in ethanol and benzene" and "almost insoluble in benzene, and more easily soluble in acetone" in examples of Rothmann. Various alternatives are suggested "to increase the solubility of the final product."

The Board of Appeals found the claimed compositions obvious in view of Rothmann. The board said:

"* * * However, it is known in the art without need of citations of authority therefor that therapeutics are usually dispensed and utilized in either liquid or solid media. In re Rosicky, 47 CCPA 859; 1960 C.D. 197; 755 O.G. 929; 276 F. (2d) 656; 125 USPQ 341. Thus, the Examiner\'s rejection of claim 22, which requires a single additional component, an inert solid, is made obvious by the teaching of the therapeutic use of the compounds in Rothmann. (See also In re Craige Jr., 38 CCPA 1114; 1951 C.D. 433; 650 O.G. 324; 189 F.(2d) 620; 90 USPQ 33.)

"We wish to note at this point that the claims read upon compositions containing the listed components regardless of the ultimate use thereof. Limitation in the preambles of the claims to an intended use in the `suitable for ____ ____\' terms may not be relied upon to support patentability over such compositions disclosed or suggested in the prior art. In re Hack, 44 CCPA 954;

1957 C.D. 334; 721 O.G. 422; 245 F. (2d) 246; 114 USPQ 161."

Appellants contend that the Rosicky case is distinguishable because no particular carrier was there recited nor was any particular combination of ingredients claimed for a specific purpose. They argue:

"* * * Nothing appears in the art and nothing is found in In re Rosicky indicating that the combinations of these claims would have been obvious to one skilled in the art at the time the invention was made as there is nothing in the art `to suggest the desirability of the * * * combination.\' In re Bergel et al. 292 F.2d 955 48 CCPA 1102, 130 USPQ 206."

As to claim 22, appellants state that the active ingredient is dispersed in a pulverulent solid of limited particle size and thereby differs from "solid media" said to be obvious in Rosicky.

Claim 23 is drawn to the active ingredient in a mixture of pulverulent solid and a surfactant. Appellants contend that there is no suggestion of the desirability of the mixture.

As to the surfactant, appellants do not deny that surfactants are used in therapeutic compositions, but they argue that this fact "is not relevant because the purpose of formulations and the type of their formulations are entirely different."

As to the preamble, appellants advance the position that the preamble is part of the subject matter as a whole...