Application of Migrdichian

• Decision Date: 27 June 1946
• Docket Number: Patent Appeal No. 5130.
• Parties: Application of MIGRDICHIAN.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

70 USPQ 403, 156 F.2d 250 (1946)

Application of MIGRDICHIAN.

Patent Appeal No. 5130.

Court of Customs and Patent Appeals.

June 27, 1946.

Ellis S. Middleton, of New York City (Edmund H. Parry, Jr., of Washington, D. C., of counsel), for appellant.

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

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

GARRETT, Presiding Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner rejecting all the claims of appellant's application, numbered 1 to 15, inclusive, for a patent relating to method of treating organic materials such as seed to protect such materials from the ravages of plant pests and microorganisms. The broad title of the application is "For Mercury Compounds as Disinfectants." The specification recites:

"The present invention relates to new disinfectants, and more particularly to certain organic mercury compounds which are especially effective against plant pests and microorganisms with the result that they may be used for all purposes of preserving and disinfecting, for example, in the immunizing of seed grain, the prevention of mildew formation, the preservation of wood, in the preservation of glue and the like."

It appears that claims 1, 2, 3, 7, 8, and 9 are generic in character. The others are species claims and are, as stated, in substance, in the brief of the Solicitor for the Patent Office, divisible into three groups, (1) Nos. 4, 10, and 13, specific to the use of mercury acetates; (2) claims 5, 11, and 14, specific to the use of organic mercury hydroxides, and (3) claims 6, 12, and 15, specific to the use of organic mercury chlorides.

Inasmuch as all the generic claims were rejected, appellant was required under Patent Office rule 41 to elect one species for prosecution. He elected the mercury acetate group, that is, claims 4, 10, and 13.

In consequence, none of the other species claims received consideration on their merits by the tribunals of the Patent Office. The examiner held them "not readable on the elected species," and the board held them "not entitled to examination in this case in the absence of an allowable generic claim."

Generic claim 1 reads as follows:

"1. The method of protecting organic materials subject to attack by plant pests and microorganisms which comprises treating the said materials with an organic mercury compound of the general formula:

in which R1 denotes an organic group containing in addition to hydrogen only one negative substituent, R2 denotes hydroxyl or a radical having the capacity of forming a salt with mercury, and R3, R4, R5 and R6 are selected from the group consisting of hydrogen, alkyl, aryl and aralkyl radicals." (Italics supplied.)

Species claim 4 (the first in number of the particular group of species claims selected for prosecution) reads:

"4. The method of protecting organic materials subject to attack by plant pests and microorganisms which comprises treating the said materials with an organic mercury compound of the general formula:

in which R1 denotes an organic group containing in addition to hydrogen only one negative substituent selected from the group consisting of cyanogen, thiocyanogen, halogen, alkyloxy and carbalkoxyl radicals." (Italics supplied.)

It will be observed that we have italicized the language, "only one negative substituent," appearing in the claims. This language, or phrase, appears in all the claims and is stressed by appellant.

We deem it proper to state at this point that counsel for appellant, although present at the hearing before us, declined to avail himself of his right under the rules of the court to present an oral argument, either by way of a preliminary opening statement or by way of reply to the statemens and arguments made orally by the Solicitor for the Patent Office, although he was invited to do so. Further, it may be said that he did not file, or seek to file, any reply brief to the brief of the Solicitor for the Patent Office, which, of course, was filed subsequent to his.

The brief of the solicitor presents a comprehensive analysis of the involved claims based upon the disclosures of the specification and compares them in considerable detail with the showing of the references.

The brief for appellant states that the formula embraced in generic claim 1, supra, is the general formula used in the claims and that the "R's represent certain designated elements or radicals." In view of this statement it is deemed unnecessary to quote the other claims here involved, since it is obvious that they stand or fall together.

In rejecting the claims (both the generic and elected species claims) the examiner cited two patents, viz.:

                  Gornitz et al.   2,145,594   Jan. 31, 1939
                  Callsen          2,119,701   June  7, 1938
                

Specifically, the examiner, in his statement following the appeal to the board, said: "The * * * claims stand rejected as unpatentable over Gornitz, considered with Callsen," and thereafter analyzed what he deemed to be the pertinent features of the references.

The board rendered two written decisions in the case, the first dated October 12, 1944. Following it appellant filed a request for reconsideration in which the board was severely criticized for its failure to discuss as fully as counsel for appellant thought necessary certain of the issues raised before it.

In a well-tempered response the board further discussed appellant's contentions, but adhered to its original conclusion.

The board gave little attention to the Callsen patent, saying that it was regarded as merely cumulative. It was not overruled as a reference, however, and it is discussed to some extent in the brief of the Solicitor for the Patent Office. It relates to certain described mercury compounds (all the claims being product claims) which the specification states have a variety of uses, among them being (1) use for "the preservation of wood," (2) "for disinfecting purposes," (3) "for combating parasites, especially for immunizing seed grain * * *," which three are uses named in appellant's specification, supra. It is conceded by appellant that it "discloses starting materials or reactants, some of which are included in Applicant's broad class of substances," but appellant contends that the patentee "does not propose the use of these materials as bactericides or fungicides but on the contrary reacts them with other substances to form bactericides or fungicides in which he is interested," the brief saying further:

"In other words, he Callsen was totally unaware that many of his initial reactants were themselves efficient seed disinfectants so that it was unnecessary to go through the complicated reaction proposed by him in order to arrive at substances having these desirable properties."

On the other hand, the brief of the Solicitor for the Patent Office asserts (references to record pages being omitted):

"The fact of the matter is that Callsen specifically discloses * * * as a starting material or reactant, chloroethoxyethyl mercuric hydroxide. This is the hydroxy compound which Migrdichian asserts may be obtained by the action of dilute alkalies on the ? — chlorethoxyethyl mercury acetate, his `typical' compound * * *. The disclosure in the Callsen patent of chloroethoxyethyl mercuric hydroxide effectively refutes Migrdichian's statement * * * that such compounds are new.

"The examiner found the Callsen patent to be pertinent as showing that no invention resides in modifying the Gornitz et al. compounds so that they include a single negative substituent."

The foregoing assertion, which accords with the statement of the examiner is not answered by appellant, and we have no reason to doubt its accuracy.

We are confronted here with questions relating to chemical compounds and formulas which are technical in character. In such cases, where the findings of the examiner are not overruled by the board and are not questioned by the applicant, as is the situation here, we accept them without question.

The Gornitz et al. patent embraces both product and method claims. The method claims, however, are for the method of producing the products defined in the product claims. The claims here at issue, as may be seen from generic claim 1, supra, are for the method of protecting organic materials against plant pests, etc., by using the product defined in the formulas.

The patent recites that it relates to seed disinfectant compositions containing certain organic derivatives of mercury, stating that it is known that certain organic mercury compounds are suitable seed disinfectants. Claim 1 of the patent reads:

"1. A seed disinfectant composition, comprising an organic mercury compound of the structural formula

wherein Y represents an acid radical taken from the class consisting of inorganic and lower fatty acids, R a trihalogenated alkyl radical, R' is a radical taken from the class consisting of hydrogen and lower alkyl radicals and R" is a radical taken from the class consisting of hydrogen and lower saturated hydrocarbon radicals."

The brief of the Solicitor for the Patent Office, after quoting the foregoing formula from the patent (references to the record pages being omitted as indicated by stars), proceeds:

"Y in the patentees' formula may represent * * * the acid radical, acetoxy (OCOCH3), or halogen (chlorine, Cl, e. g.); in these respects Y has the same values as R2 in appellant's general formula * * *. Continuing to compare these two formulas element by element, progressing toward the left, the next substituent is mercury (Hg) in both. Next in the patentees' formula, R may, for one thing, denote hydrogen (H); and to that extent it is, in its four appearances, identical with appellant's R3, R4, R5, and R6. The linking oxygen (O) in both formulas is the...