Application of Papesch

• Decision Date: 20 March 1963
• Docket Number: Patent Appeal No. 6882.
• Citation: 315 F.2d 381
• Parties: Application of Viktor PAPESCH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

315 F.2d 381 (1963)

Application of Viktor PAPESCH.

Patent Appeal No. 6882.

United States Court of Customs and Patent Appeals.

March 20, 1963.

Helmuth A. Wegner, Chicago, Ill., for appellant.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, 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 rejection of claims 1-3, the only claims presented in appellant's application Ser. No. 836,870, filed August 31, 1959, for "2,4,6-TRIALKYLPYRAZOLO 4,3-d-4,5,6,7-TETRAHYDROPYRIMIDINE 5,7-DIONES."

The specification, which is brief and occupies less than three pages of the printed record, states:

"The trialkyl compounds of this invention have been found to possess unexpectedly potent anti-inflammatory activity in contrast to the related trimethyl compound. The instant compounds are also diuretic agents."

Claim 1 reads:

"A compound of the structural formula

wherein R is a lower alkyl radical containing more than one and less than five carbon atoms."

Claim 2 is specific to a compound within claim 1 wherein each R is an ethyl radical (which has, inter alia, 2 carbon atoms) and claim 3 is specific to the n-butyl compound wherein the alkyl radicals each contain 4 carbon atoms. There are no other claims and the legal issue is such that it is unnecessary to distinguish between the claims.

Application Prosecution

The prosecution of this application was truly compact. On the first action the examiner rejected the claims on a single reference:

"Robins et al., J. Am. Chem. Soc., Vol. 78, pp. 2418-2422 (1956)"

The action is so brief and to the point that we quote it in full:

"Claims 1-3 are rejected as being unpatentable over Robins et al. Note Compound XVI. The ethyl and n-butyl side chains depicted in applicant\'s claims 2 and 3 are obvious homologs of the methyl groups shown in identical positions in the reference compound and the method of preparation is substantially the same. (In re Henze, 636 O.G. 698)." Emphasis added.

Compound XVI of the Robins et al. article is described by its structural formula which would be identical with that of appellant's claim 1, supra, if all of the three R's therein were methyl, -CH3, producing a trimethyl compound. There is textual reference to this and two other formulae, reading as follows:

"Methylation of 5,7-dihydroxypyrazolo4,3-d-pyrimidine with dimethyl sulfate in the presence of sodium hydroxide gave a compound C8H10O2N4 isomeric with caffeine, presumably 1,4,6-trimethylpyrazolo 4,3-d pyrimidine-5,7-dione (XV), although the possibility of the isomeric structure XVI for this compound has not been entirely eliminated. It is interesting to note that under the conditions of the experiment only one isomer was isolated." Emphasis ours.

By reason of this speculation on the part of Robins et al. as to whether they really produced XV or XVI, appellant points out that what the Patent Office relies on as prior art to show obviousness of the claimed compounds is the formula considered least likely by the authors. However, we give no weight to the speculative nature of the prior art compound because we do not believe that, in final analysis, appellant does so. His brief states:

"The Robins et al. reference discloses, at best, that the lower homolog of the claimed compounds may possibly exist, as a less likely alternative, and, if it does, how it is formed."

The case is really argued, however, on the assumption that a lower homolog of the claimed compounds is in the prior art and we shall proceed on that assumption. In other words, comparing the specific compound of claim 2 with the prior art, the compounds differ only in that where appellant has three ethyl groups the prior art has three methyl groups, a total difference of three -CH2 groups. Whether this meets the usual definitions of "homology" (according to two additional references to chemical texts made of record by the Patent Office) we do not stop to consider inasmuch as appellant has not argued the point.¹ Indeed, we do not see why the Robins et al. compound XVI is not "the related trimethyl compound" referred to in the specification, quoted above.

The claims having been rejected on Robins et al., appellant responded by filing the affidavit of Dr. Francis J. Saunders (Ph.D.1937), physiologist and a member, since 1938, of the Biology Division of G. D. Searle & Co., owner of the application at bar. Dr. Saunders has been in charge of Searle's endocrinological and related physiological research. The affidavit reports comparative tests of the Robins et al. trimethyl compound and appellant's triethyl compound which show that the latter is an active anti-inflammatory agent while the prior art compound is completely inactive in that respect. We need not examine the tests in detail because the Patent Office has accepted the factual conclusions of the affiant based on them.

We have before us, therefore, a single clean-cut issue of law. The claims are rejected only on the ground that they are unpatentable over a single reference which discloses what is conceded to be a lower homolog of the claimed compounds (whether or not all chemists would so consider it) and proof has been given showing that the compound of claim 2, "a representative member of" the group of compounds claimed, possesses an advantageous pharmacological property shown not to be possessed by the prior art compound. In filing the affidavit, appellant stated in his response to the office action that the compounds of his claims 1 and 3 included more distantly related compounds than the triethyl compound tested and submitted that the showing of unpredictable and "completely dissimilar biological properties" established the patentability of the compounds he claimed.

The Examiner's Views

The reply to this first response was a final rejection stating, in pertinent part:

"The claimed compounds are obvious under 35 USC 103 in view of the reference. * * *. The affidavit is interesting but irrelevant to the rejection since it is not directed to the subject matter `sought to be patented\', namely, the use in the arts of the compounds. The obvious compound is not made less obvious by its properties in an art use. * * *. It appears that if an invention is present, it resides in the use of the claimed compounds as anti-inflammatory agents and should be claimed as such. Therefore, it is held that the subject matter of the claim is obvious in view of the reference and unpatentable thereover."

The applicant appealed to the board, which took no notice of the criticism that the invention should have been claimed as a "use." Before leaving this rejection, however, we make the observation that the ground of rejection seems to us somewhat confused, that it is unclear whether the affidavit was deemed truly irrelevant to the patentability of the claimed compounds, which alone were the "subject matter sought to be patented," and unclear to what extent, if any, obviousness of the compounds was predicated on the contention that the applicant should claim his invention as a process, which is the only way a "use" can be claimed. 35 U.S.C. §§ 100(b) and 101. The last sentence of the above quotation seems to involve a non sequitur.

The examiner who made the above rejection next filed a very long and very argumentative Examiner's Answer, which reverts to the theme that appellant's "contribution" was not in the novel compounds claimed per se, "but rather in the newly discovered properties which are advantageous for a particular utility." Said the examiner:

"Such contribution may properly be protected by claims to the mode of employing the compounds for their unexpected novel use, but does not support claims covering compounds which are structurally obvious and which also exhibit a family of properties and characteristics common to, and not differing significantly from, those of the homologue known and available to the prior art. An unexpected difference in a single property should not be adequate to support a claim for a novel, but obvious, homologue, which claim will dominate all properties and uses of the homologue, including those differing only in the expected manner from the known product.²

This passage being only an expression of what might be termed the background sentiments of the examiner, the actual rejection was legally predicated by him on section 103 and its essence is contained in the following quotation:

"In view of the known general relationship of homology, the disclosure of an organic chemical structure immediately suggests and renders obvious to the organic chemist of ordinary skill its homologues, as organic compounds. The homologous compound being obvious it is not seen how it can become less obvious, as a compound, merely by discovering that in addition to the community of common physical and chemical properties expected of members of an homologues sic series it also has other improved or valuable properties. Such discovery is not proper support for a patent for the compound per se. (In re Gauerke 24 CCPA 725, 86 F.2d 330 31 USPQ 330 and the decisions supra)."

We will dispose now of the Gauerke case, which has no bearing on the issue here. It held only that it was not a patentable invention to use in an old resin composition containing drying oil, sunflower seed oil, which was known, and known also to be a drying oil, in place of other drying oil formerly used. The court said that incorporating sunflower seed oil in the resin was "a use which any one skilled in the art, following the teachings of the prior art, might make of it." We are here concerned with the patentability of a new chemical compound having an inherent unknown, unobvious, pharmacologically advantageous property. Furthermore, nobody would be led by the prior art to use it for any purpose, so far as the record shows.

The Board...