Application of Oppenauer

• Decision Date: 26 June 1944
• Docket Number: Patent Appeal No. 4907.
• Citation: 143 F.2d 974,62 USPQ 297
• Parties: Application of OPPENAUER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

62 USPQ 297, 143 F.2d 974 (1944)

Application of OPPENAUER.

Patent Appeal No. 4907.

Court of Customs and Patent Appeals.

June 26, 1944.

Henry C. Parker, of Washington, D. C., for appellant.

George Foulkes, of Washington, D. C., for Alien Property Custodian.

W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.

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

JACKSON, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner rejecting claims 64, 66, 68, 69, 72, 75, 78, 80 and 84 of an application for a patent on a "Process for Oxidizing Unsaturated Polycyclic Alcohols," on the ground that they are broader than warranted by the disclosure. No references are relied on. Six claims were allowed.

The invention is described in the statement of the examiner as follows:

"The invention in this case consists in a process for producing unsaturated polycyclic ketones of the cyclopentanopolyhydrophenanthrene series by subjecting a keto-secondary alcohol of said series to the action of a catalyst of the class consisting of aluminum tertiary alcoholates and magnesium tertiary alcoholates in the presence of excess of an organic compound selected from the group consisting of aldehydes and ketones."

Claims 64, 68 and 84 are illustrative of the involved subject matter and read as follows:

"64. The process or manufacturing polycyclic ketones which comprises subjecting a secondary alcohol of the cyclopentano-polyhydrophenanthrene series in which it is theoretically possible for at least one hydroxyl group to be replaced by a keto group to the action of an excess of an organic compound selected from the group consisting of aldehydes and ketones in the presence of a metal alcoholate of a tertiary alcohol."

"68. The process of manufacturing polycyclic ketones which comprises subjecting an unsaturated polycyclic alcohol in which it is theoretically possible for at least one hydroxyl group to be replaced by a keto group to the action to an excess of an organic compound selected from the group consisting of aldehydes and ketones in the presence of an alcoholate selected from a class consisting of the tertiary aluminum and chloro-magnesium alcoholates."

"84. The process of manufacturing polycyclic ketones which comprises subjecting an unsaturated secondary polycyclic alcohol of the cyclopentano-polyhydrophenanthrene series to the action of an organic compound selected from a class consisting of aldehydes and ketones in the presence of a tertiary alcoholate selected from a class consisting of the aluminum and chloro-magnesium alcoholates, the reaction taking place in an inert solvent and at a temperature ranging from 50° to 140° C."

Subsequent to the final rejection by the examiner and prior to his statement, appellant filed an affidavit by a highly skilled scientist purporting to show that the disclosure of the application was sufficient basis for broad claims. The examiner held the affidavit to have no pertinence in that the disclosure in an application was not subject to change of scope by means of affidavits either as to facts or opinion. The Board of Appeals made no mention of the affidavit.

The tribunals below rejected claim 64 on the ground that it failed to define "secondary alcohol" as being unsaturated, claims 66, 68 and 78 because of the breadth of the definition of the alcohols, and claims 64, 66, 69, 72, 75, 80 and 84 because the definition of the catalyst was not in accordance with the disclosure.

Appellant in his brief lays great stress upon the affidavit, which sets out the affiant's interpretation of appellant's...