Application of Nelson

• Decision Date: 14 June 1960
• Docket Number: Patent Appeal No. 6338.
• Citation: 280 F.2d 172
• Parties: Application of John A. NELSON and Anthony C. Shabica.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

280 F.2d 172 (1960)

Application of John A. NELSON and Anthony C. Shabica.

Patent Appeal No. 6338.

United States Court of Customs and Patent Appeals.

June 14, 1960.

COPYRIGHT MATERIAL OMITTED

A. Ponack, Wenderoth, Lind & Ponack, Washington, D. C. (Harry Goldsmith of counsel), for appellant.

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

American Patent Law Association, William H. Webb, Washington, D. C., John D. Upham, John H. Schneider, John R. Janes, John T. Kelton, New York City, Harvey W. Edelblute, Stamford, Conn., Leland L. Chapman, Cleveland, Ohio, The Connecticut Patent Law Association, James Edwin Archer, Robert Ames Norton, John E. Hanrahan, Stamford, Conn., amicus curiae.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^* Original argument before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON (retired), Judges

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims of appellants' application for patent, serial No. 259,014, filed November 29, 1951, on "14-Hydroxy Androstenes."

The original opinions in this case were handed down on June 24, 1958. The court's decision reversed the rejection of the claims. After extensions of time granted on motion and stipulations, the Patent Office filed a Petition for Rehearing on August 25, 1958 and appellants' objections thereto were filed September 29, 1958. We granted the petition on April 17, 1959. Appellants and the Patent Office filed additional briefs on October 19 and 20, 1959. Amicus curiae briefs were received during September from the American Patent Law Association and the Connecticut Patent Law Association and the Philadelphia Patent Law Association filed a "Statement" saying that it approved and adopted the position taken by the American Patent Law Association in its amicus brief. All amici supported appellants' position and urged us to adhere to our decision. Re-argument was heard November 2, 1959, counsel for appellants, the American and Connecticut associations, and the Patent Office participating.

In accordance with our usual practice, our former opinions have been withheld from formal publication. They are hereby withdrawn. The following is the opinion of the court. While we have revised our first opinion our former decisions are unchanged.

Introduction

The legal issue in this case has evinced the changeability of a chameleon, exhibiting sometimes subtle and sometimes complete changes of color. In introducing the subject we can, however, say with complete certainty that the ultimate question is whether the disclosure of appellants' application is sufficient to support a patent. There is no rejection on prior art, no question of novelty or unobviousness or that the invention is in a category of subject matter on which patents can be granted. Utility seems to be involved but the precise Patent Office position on this point is still obscure.

Appellants have disclosed a group of novel compounds and how to make them. They have also said certain things about what can be done with them and how to do it. Appellants and the amici contend that this disclosure is sufficient to support a patent and the Patent Office says it is not. Who is right depends on what the specification says either about the utility of the invention or how to use the novel compounds, or both, and what the law is on these matters.

The law, at least in its statutory form, can be most simply stated. In Title 35 of the United States Code, section 101 reads, in pertinent part, as follows:

"Whoever invents or discovers any new and useful * * * composition of matter * * * may obtain a patent therefor, subject to the conditions and requirements of this title."

This limits the grant of patents to "useful" inventions and this is the "utility" requirement of the statute. We must also consider section 112 which says emphasis ours:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or carrying out his invention."

In section 112 there are the "how to use" and the "best mode" requirements about which much of the argument in this case revolves.

The Disclosure

The claims on appeal are directed to new steroid compounds, claims 1 and 10 being typical and reading:

"1. A C-19 14 a-hydroxy-androstene wherein the double bond is attached to the carbon atom 5.

"10. 14a-hydroxy-4-androstene-3, 17-dione."

Claim 10 was copied by appellants from Murray et al. patent No. 2,662,089 (issued on an application filed after appellants filed) in order to provoke an interference. Appellants' specification contained, when filed, the following statements about the use of the claimed compounds emphasis ours:

"The cardiac glycosides, such as digitoxigenin and the like, comprise steroids which contain an OH-group in the 14-position. Important physiological properties are attributed to these steroids. However, synthetically produced C-19 14-hydroxyandrostenes wherein the double bond is attached to carbon atom 5 have not heretofore been known.

"A primary object of the present invention is the embodiment of such synthetically-produced compounds, corresponding to formula I supra.¹ These new compounds are valuable intermediates in the preparation of steroids wherein a hydroxyl group is present in the 14-position, and of steroids containing a 14,15-double bond, and of steroids the synthesis of which requires such groupings.

* * * * * *

"Conversion of the androstene compounds to produce analogous saturated 14-hydroxy steroids is effected by hydrogenating the 5-double bond, for example by catalytic methods."

The specification also teaches that the acyloxy groups in the 3- and 11- positions of appellants' compounds can be hydrolyzed to the corresponding 3-hydroxy groups and the latter oxidized to keto groups to produce the corresponding ketone compounds. It also teaches how the 17-keto group can be reduced to a hydroxyl group with the aid of an agent such as catalytic hydrogen, sodium borohydride, lithium aluminum hydride and the like, following these statements with illustrative reaction schemes setting forth the conversions by means of graphic formulae.

The Rejection

The board described the rejection thus: "Claims 1 through 7 and 10 have been rejected as lacking utility." Emphasis ours. This is the rejection it affirmed. The examiner's final rejection of July 26, 1954, which the board had under review, said emphasis ours:

"Claims 1 to 7 and 10 are finally rejected for lack of utility for the reasons fully explained in the last Office letter. * * *

"* * * in view of the fatally defective nature of the present application, applicants are not entitled to a patent * * *."

The examiner's Answer, on the appeal to the board, after stating again that the claims were under rejection "as lacking in utility," also said, inter alia,

"The applicants fail to show how these intermediates can be converted to products having known useful properties. The mere allegation that they are useful for conversion is not sufficient. * * * there is no justification for assuming that a conversion product of the claimed compound will be useful. * * * the disclosure is fatally defective with respect to the utility requirement of 35 USC § 112 * * *." Emphasis ours.

Since the board affirmed the examiner's rejection, that, of course, is the ground of rejection which is before us for consideration. In re Scharwath, 164 F.2d 609, 35 CCPA 763.

The essence of the board's reasoning in affirming the foregoing rejection is contained in the following excerpts from its first opinion:

"There is no assertion in appellants\' specification that they are able to synthesize an active digitalis glycoside from their intermediate, nor any other specific physiological active steroid having a hydroxyl group in the 14-position or with a 14,15-double bond. Emphasis ours.

* * * * * *

"* * * there is no evidence before us that * * * appellants ever produced a useful steroid from their * * * intermediates. Emphasis ours.

* * * * * *

"35 U.S.C. § 112 requires an applicant to fully describe how to make and use the invention and to set forth the best mode contemplated of carrying it out. Clearly appellants have failed to do that in this case because they have not shown how their intermediate may be used to prepare a single useful steroid. We are unable to conclude that a method for doing this would be obvious to one skilled in the art. Board\'s emphasis.

* * * * * *

"There are of course cases where no utility need be disclosed because it is either obvious or well known. However an incomplete disclosure, in a case (as herein) where utility is necessary to a full disclosure of the invention, is no better than one totally lacking it because both fail to comply with 35 U.S.C. § 112." Emphasis ours.

The board, as did the examiner, cited the 1950 decision of this court in In re Bremner et al., 182 F.2d 216, 37 CCPA 1032 and seemed to regard that case as the controlling authority supporting its point of view. We shall point out later why the Bremner case fails to support the rejection.

The Issue

It will be seen from the foregoing that the rejection was variously predicated on lack of utility, failure to show utility, failure to allege sufficient utility, failure to comply with the "utility requirement of 35 USC § 112" and failure to disclose how to use the claimed compounds. Out of this congeries of explanations as to why the specification was allegedly "fatally defective" the Patent Office solicitor distilled the statement in his original appeal brief...