Application of Lunsford

• Decision Date: 17 March 1966
• Docket Number: Patent Appeal No. 7478.
• Citation: 148 USPQ 716,357 F.2d 380
• Parties: Application of Carl D. LUNSFORD.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

148 USPQ 716, 357 F.2d 380 (1966)

Application of Carl D. LUNSFORD.

Patent Appeal No. 7478.

United States Court of Customs and Patent Appeals.

March 17, 1966.

Gordon W. Hueschen, Kalamazoo, Mich., for appellant.

Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for Commissioner of Patents.

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

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 4 and 5 in application serial No. 821,358, filed June 19, 1959, for "Halo-Substituted Phenoxymethyl Oxazolidones." No claim is allowed.

The sole issue is obviousness under 35 U.S.C. § 103 in view of the following references:

Beasley et al., Chem. Abstracts, Vol. 51, col. 8723 (1957)¹

Karrer, "Organic Chemistry" (Elsevier), pp. 434, 445 (1950)

Noller, "Chem. of Organic Compounds," 2nd Ed., (Saunders), pp. 440-1 (1957)

Fieser et al., "Organic Chemistry," (Reinhold), pp. 624-626 (1956)

The subject matter on appeal and its relation to this art can best be understood by referring to the following formula:

Claim 4 defines the compound shown, namely, 5-(p-chlorophenoxymethyl)-2-oxazolidone.

Claim 5 defines the compound having the same structure except that the chloro atom is in the meta or 3 position rather than the 4 position as shown.

Beasley, the principal reference, discloses the compound having the same structure except that the chloro atom is in the ortho or 2 position.

As to the remaining references, we agree with the board that they "pertain to a fact so well known in organic chemistry, namely the existence of ortho, meta and para isomers of disubstituted benzene compounds, that it is hardly necessary to refer to them further."

The board also said:

* * * we have come to the conclusion that, under the facts of this particular case, the appealed claims are not patentable over the cited Beasley et al. publication.

This issue therefore is: are appellant's m- and p-chloro compounds patentable over the o-chloro isomer, and other disclosure, of Beasley?

Appellant admits "that, as pure chemical compounds," his compounds "have a relationship sufficiently close to the compound of the prior art so that they would be held obvious under 35 U.S.C. § 103 absent a showing of a significant difference in properties." (Our emphasis.) He urges patentability however, on the grounds: that his compounds are anti-convulsants, particularly effective against electroshock-induced convulsions, which fact is said to be indicative of ultimate anti-convulsant use against epilepsy; that there is no teaching in the art that the reference compound is at all active as an anti-convulsant of any type; that, while he discovered the Beasley compound to have anti-convulsant properties, he also found his compounds to be 4.4 and 7.0 times as potent as that compound against electroshock-induced convulsions; and that the claimed compounds are therefore patentable because (1) based upon what the reference teaches, appellant's compounds very clearly possess an unexpected property, and (2) even if one assigns to the "prior" art that information about the Beasley compound which appellant himself discovered, his compounds have been shown to possess unexpected superiority in potency which itself is conclusive of non-obviousness.

The examiner's basic position was that Beasley discloses not only the o-chloro isomer of appellant's compounds but other "related" compounds as well. One of these shows "a para-chloro positioning" and "mephenesin is mentioned", this latter compound being 3-o-toloxy-1,2-propanediol. The examiner also stated that 5-(o-methoxyphenoxymethyl)-2- oxazolidone "is a well-known pharmaceutical."

From this the examiner argued that the "prior art has found closely related compounds to have potent pharmacological properties" and contended that "When an important medicine is discovered it is customary practice to produce various molecular variants of it seeking the optimum as well as seeking other medicines which may derive from the fortunate association of atoms." In a compound, according to the examiner, "there is a fundamental association which gives the `personality' of the compound and, usually, minor substituents then merely shade the properties in matter of degree." That being so, the examiner found the so-called "Second Ward Affidavit," showing a number of quite startling changes in pharmacological properties resulting from seemingly minor structural changes in compounds appellant believed to be "related," unpersuasive of patentability saying:

* * * the exceptions sometimes prove the rule and that there are exceptions does not negative the fact that generally changes as in isomers or homologues only affect properties in degree only. This does not make the compounds any the less obvious² as such.

The board, in an opinion dated February 28, 1964, took somewhat the same approach. While stating that "properties of the compounds must be considered together with the chemical structures and, in a proper case, a patent may be granted by virtue of the unobvious properties," it found affidavits submitted by appellant showing the compound of claim 4 to be 4.4 times and the compound of claim 5 to be 7.0 times as potent as the Beasley compound not convincing that the claimed compounds are "possessed of properties not possessed by the ortho compound of the prior art," and affirmed the examiner on the ground that "A mere improvement in the same property does not establish unobviousness * * *."

Our principal difficulty, at this point, in accepting the examiner's and board's positions is that their reasoning is predicated on the premise, to use the board's own words, that "the prior art compound has significant potency as an anticonvulsant against electroshock-induced convulsions * * *." While that is the fact, as shown by some of the above-mentioned affidavits, we are unable to find a dislosure of it in the art of record. Clearly, appellant's discoveries in this regard cannot be relied upon to show the obviousness of his invention. Those discoveries are not prior art within the purview of section 103, and are made known to us in the record only through affidavits, not references.

The solicitor's brief gives signs of his having struggled with the same problem. There, and at oral argument in an effort to show that the examiner and board "must have had some basis in mind" for their statement, the solicitor contended that appellant "should not make such an argument that anti-convulsant activity in the prior art compound is taught only by him because he should know that the reference compound would be expected to be active as an anticonvulsant." (Our emphasis.) This follows, according to the solicitor, because (1) appellant has suggested no other activity for the reference compound and his specification states that compounds of similar structure to his were "known, and previously most active," (2) the original Beasley article appeared in the Journal of Pharmacy and Pharmacology, which fact is noted in the abstract and therefore suggests pharmaceutical activity of the compounds disclosed therein, (3) the abstract describes experimentation with mephenesin which is a known anti-convulsant according to The Merck Index, 6th ed., 1952, and thereby also suggests anti-convulsant activity of other compounds disclosed in the reference, especially those prepared from mephenesin, and (4) appellant himself took out a prior art patent³ showing that compounds of similar structure are known to possess anti-convulsant activity. This, says the solicitor, is "some evidence" of what appellant knew and should be considered, notwithstanding the fact that that patent, technically speaking, was not used as a reference after the first action. Finally, the solicitor argues, since appellant has not submitted evidence to show the reference compound would not be expected to have anti-convulsant activity, the "finding" of the board that it has known activity should prevail, citing In re Knapp-Monarch Co., 296 F.2d 230, 49 CCPA 779.

Without implying our acceptance of the arguments above summarized, we defer for the moment further comment on them except to point out that Knapp-Monarch involved the issue of likelihood of confusion under section 2(d) of The Trademark Act of 1946 (15 U.S.C. § 1052 (d)), in which we said that "Factual matters of which judicial notice is taken" can be challenged by production of contrary evidence, but, in the absence of such evidence, a finding by the board based on its judicial notice is conclusive. We are unable to see, in the case at bar, any finding by the board based on such judicially noted facts. Rather, we tend to construe its statement that the prior art compound has anti-convulsant activity as an allegation, unsupported by any facts, unless of course the solicitor is suggesting that the examiner and board were somehow impliedly taking judicial notice of such publications as The Merck Index, supra, or appellant's issued patent, and which he seems to be asking us to do now.

The solicitor's brief, like the examiner and the board, makes a point about enhanced potency in the same kind of property, saying:

Appellant also urges throughout his brief that the increased potency of 440% and 700% of his compounds is necessarily an unexpected result which makes his compounds patentable, and he finally poses the question as to what greater degree of activity would have to be shown to make the compounds patentable * * *. It is clear from the decisions of this Court that a showing of up to nine times greater activity does not necessarily make a compound patentable, In re Carabateas 345 F.2d 1013, 52 CCPA 1386, 145 USPQ 549; In re Rosselet et al., 347 F.2d 847 52 CCPA ___, 146

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