APPLICATION OF LORENZ, Patent Appeal No. 7211.
| Decision Date | 02 July 1964 |
| Docket Number | Patent Appeal No. 7211. |
| Citation | 333 F.2d 908,51 CCPA 1522 |
| Parties | Application of Walter LORENZ and Gerhard Schrader. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Connolly & Hutz, Wilmington, Del. (Werner H. Hutz, John A. Sarjeant, Wilmington, Del., of counsel), for appellants.
Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for the Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.
Stated generally, the issue presented by this appeal arises under 35 U.S.C. § 103 and requires us to determine whether the differences between the compounds of the appealed claims and the prior art are such that the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art at the time appellants made their invention.
The application in issue, Serial No. 8,928, filed February 16, 1960, is a joint application of appellants and is entitled "Thionophosphonic Acid Esters and a Process for their Production." Each of the appealed claims 1-6, 9 and 11 relates to such esters and to compounds having stated formulas. The claimed compounds are said to possess insecticidal and acaricidal properties.
Claim 1 is the generic claim and reads as follows:
Claims 2-4, 6 and 9 cover those compounds of claim 1 wherein R is a lower alkyl group and X and Y are both sulfur. Such compounds are referred to as alkyldithiophosphonates. Claims 5 and 11 cover those compounds of claim 1 wherein R is a phenyl radical, X is sulfur and Y is oxygen. Compounds in this group are called phenylthiophosphonates.
Appellants assert that the claimed compounds are highly active plant protective agents having insecticidal and acaricidal activity, as against aphids, mites and caterpillars. The toxicity is said to be of the order of the known corresponding phosphoric acid esters disclosed in the prior art. Appellants also assert, however, that the new compounds have an advantage over the prior phosphoric acid esters in that their thermal stability is greater than that of the corresponding phosphoric acid esters. It is asserted that this stability is such that appellants' claimed compounds may be used even in moist, tropical climates. While no appealed claims cover a method of production of the new compounds, the method disclosed by appellants appears to be similar to the methods used for producing the corresponding phosphoric acid esters of the prior art.
The references relied upon by the examiner and the board in rejecting the claims are:
Lorenz I 2,758,115 Aug. 7, 1956
Lorenz II 2,843,588 July 15, 1958
Schrader 2,881,201 Apr. 7, 1959
Hoffmann et al. 2,907,787 Oct. 6, 1959
Schrader et al. 2,914,530 Nov. 24, 1959
Austrian Patent 167,432 Jan. 10, 1951
German Auslegeschrift 1,050,768 Feb. 19, 1959
In addition, the board cited Kosolapoff, Organophosphorus Compounds 143 (1950).
The rejection which was affirmed by the board is that stated in the examiner's answers of March 30, 1962 and August 9, 1962. The answers show the rejection to have been based on Lorenz I, Lorenz II and Schrader et al. as the primary references in view of the disclosures of the secondary references, Hoffmann et al., Schrader, the Austrian patent and the German patent. The examiner's position was that the primary references taught the corresponding analogous N-methyl-benzazmido thiophosphoric acid esters which were disclosed as having the same utility as the insecticides and acaricides of the compounds of the rejected claims. It was the examiner's position that the compounds of the prior art differed from the compounds of the appealed claims in that R is an alkoxy group instead of an alkyl or phenyl group on the active insecticidal chain. It was the examiner's position as stated in his answer of March 30, 1962 that "The ancillary art demonstrates that it is generally known in this art to make such modifications to known insecticidal thiophosphoric acid esters for the purpose of obtaining modified esters wherein one of the alkoxy groups is replaced by alkyl or phenyl on the active insecticidal chain, and further demonstrates that this modification is applicable to diverse known insecticidal thiophosphoric acid esters." It was the examiner's conclusion that such modification would be expected to lead to insecticides of equal or superior insecticidal action.
Upon remand, the examiner filed a further answer dated August 9, 1962 in which the ground of rejection was more precisely stated as follows:
"* * * The rejection is not based on equivalency as urged, but rather on the ground that the instant modification is obvious in view of the fact that such modification is expected to lead to better or outstanding insecticidal activity and better properties in general."
Appellants' disagreement with the examiner's position is summarized in their brief as follows:
"Those skilled in the art would not convert the thiophosphates of the primary references to the thiophosphonates now claimed on the basis of the ancillary art of record, because the thiophosphonates of the ancillary references are structurally extremely different from the compounds of the primary references."
Appellants' brief seems to acknowledge that the primary references disclose the corresponding acaricidal thio and dithio phosphoric acid esters, the phosphorus atom being characteristically bonded to the organic radicals through an oxygen or sulfur atom; these compounds differing from those of the appealed claims only in that the radical corresponding to R is a lower alkoxy group. Thus, the more specific issue for decision becomes whether the claimed phosphonic acid esters would have been obvious within the meaning of 35 U.S.C. § 103 from the teachings of the corresponding phosphoric acid esters in the primary references. A decision on this issue turns on whether the substitution of a lower alkyl or phenyl group for the lower alkoxy group in the compounds of the primary reference would have been obvious under the conditions specified in 35 U.S.C. § 103.
To resolve this issue we shall first consider the references. Lorenz I, Lorenz II and Schrader et al. disclose thio and dithiophosphoric acid esters of benzazimides having the general...
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