Application of Norris, Patent Appeal No. 5633.
| Decision Date | 02 February 1950 |
| Docket Number | Patent Appeal No. 5633. |
| Citation | 179 F.2d 970 |
| Parties | Application of NORRIS. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Pennie, Edmonds, Morton & Barrows, New York City (Louis D. Forward, New York City, and Clarence M. Fisher, Washington, D. C., of counsel), for appellant.
E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.
Before GARRETT, Chief Judge, and JACKSON, O'CONNELL and JOHNSON, Judges.
In this appeal we are called upon to review a decision of the Board of Appeals of the United States Patent Office, affirming that of the Primary Examiner, finally rejecting the single claim of appellant's application for a patent, serial No. 608,357, filed August 1, 1945, alleging new and useful improvements in a chemical product.
The claim was rejected by the Primary Examiner as unpatentable over the following cited prior art:
Hanriot et al., Bull. Soc. Chim de France (3) Vol. 1, pages 172-175.
Adkins et al., J. Am. Chem. Soc., Vol. 64, pages 150-154 (1942).
The Board of Appeals refused to sustain the examiner's rejection on the Meyer and Adkins et al. publications, and further stated that the Henry or Wallach reference does not fairly suggest a modification of the Meyer and Adkins references to warrant an anticipation of the rejected claim, which reads as follows:
Alpha, alpha-dimethyl-beta-imino-gammamethyl-valero-nitrile.
The claim describes a new chemical combination defined in accordance with the Geneva system of standard nomenclature. It is stated in the application that the compound is valuable an intermediate for the production of keto nitriles and esters by hydrolysis, amino acids, diamines and other products. It is said to form white crystals, melting at 85-86° C. and boiling at 140-145° C./6 mm.
The board in its decision referred to the Wache publication only, but did not reverse the decision of the examiner with respect to the Signaigo patent and the Hanriot et al. publication. Therefore, those three references are properly before the court.
None of the references discloses the compound defined in the appeal claim, the structural formula of which appears to be as follows:
The board seemingly accepted the statement of counsel for appellant that "The single claim here on appeal defines a chemical compound that is new and has beneficial utility." Therefore, we do not deem it necessary to describe in detail the disclosures in the references.
Both the examiner and the board held that the Wache publication discloses an isomer of the compound defined by the claim, and that holding has not been challenged by counsel for appellant. It is stated in their brief that the compound identified by the formula in the Wache reference "* * * is one of many of the theoretically possible isomers of the compound defined by the rejected claim." Therefore, it appears that the tribunals of the Patent Office and appellant fairly agree as to the disclosure in that reference.
The examiner held the claim to be unpatentable over the Wache reference in view of either the Signaigo patent or Hanriot et al. publication for the stated reason that the general class of compounds made by the same general process are disclosed in those references, and that an isomer of the claimed compound is old, as shown in the Wache publication.
The Board of Appeals held that the claim was properly rejected on the Wache reference, because an isomer of the claimed compound is there disclosed, and that no utility above and beyond that to be expected of such isomer was shown, citing In re Jones, 162 F.2d 638, 34 C.C.P.A., Patents, 1168.
Counsel for appellant in their brief concede that their contention as to the patentability of the claim is in apparent conflict with the holdings in the cases of In re Hass et al. (Patent Appeal Nos. 4819, 4820 and 4821) which are reported in 31 C.C. P.A., Patents, 895, 903 and 908; in 141 F. 2d 122, 127 and 130, respectively. That contention also applies to our opinion in the case of In re Jones, supra. Counsel for appellant state that they know of no decision of the Supreme Court which holds expressly or by implication that a single new and beneficially useful chemical compound is not patentable to the first inventor or discoverer thereof.
It may be observed that the argument of counsel is confined to chemical compounds and not to the position of the Supreme Court with respect to the requirements for invention involving processes, products of manufacture and compositions of matter.
Answering appellant's argument, it is pointed out in the brief of the solicitor that the law, as interpreted by the Supreme Court, is that in order to be patentable a product must, in addition to being new and useful, also satisfy the requirements of invention or discovery. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588.
We agree with the solicitor that a chemical compound obviously is a product and of course such product must belong in one of the statutory classes of invention set out in R.S. § 4886, 35 U.S.C.A. § 31, and there can be no doubt that the rule is well established to each one of those classes that a mere showing of novelty and utility is insufficient upon which to base patentability.
In the first of the Hass et al. cases, supra, we held that "novel members of a homologous series of chemical compounds must possess some unobvious or unexpected beneficial properties not possessed by a homologous compound disclosed in the prior art." 141 F.2d 125. We stated that novelty alone, without invention, is not sufficient to lend patentability to a claim, citing Thompson v. Boisselier, 114 U.S. 1, 5 S.Ct. 1042, 29 L.Ed. 76; In re Lincoln, 126 F.2d 477, 29 C.C.P.A., Patents, 942; Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58. The reasoning in that Hass case was based upon the fact that chemists understand that members of a homologous series of chemical compounds possess the same principal characteristics which vary gradually from member to member, and that knowing the chemical and physical properties of one of the members suggests the properties of the other members.
Appellant argues that, since in the Hass cases, supra, only adjacent homologues were involved, the statements concerning isomers...
To continue reading
Request your trial
-
Simon v. Taylor
...product derived from animal fats is not only a scientific fact, of which courts take judicial notice...."). See also Application of Norris, 179 F.2d 970, 974 (C.C.P.A. 1950) (taking judicial notice "that structural isomers have defined predictable physical properties, and that the chemical ......
-
Brenner v. Manson
...181 F.2d 196, 200—201, 37 C.C.P.A. (Pat.) 1009, 1014. See also In re Hass, 141 F.2d 122, 125, 31 C.C.P.A. (Pat.) 895, 901; Application of Norris, 179 F.2d 970, 37 C.C.P.A. (Pat.) 876; Application of Jones, 149 F.2d 501, 32 C.C.P.A. (Pat.) 1020. With respect to the inferior predictability of......
-
Ex parte Dalko
...composition of the prior art and render them unsuitable for use. Final Act. 14. We adopt the Examiner's findings. See, e.g., In re Norris, 179 F.2d 970, 972 (CCPA 1950) (noting that "chemists understand that members of a homologous series of chemical compounds possess the same principal cha......
-
Application of Henze
...Chemists knowing the properties of one member of a series would in general know what to expect in adjacent members. In re Norris, 37 C.C.P.A., Patents, ___, 179 F.2d 970. The same rule applies to isomers. In re Jones, 162 F.2d 638, 34 C. C.P.A., Patents, 1168; In re Norris, In effect, the n......