Application of Ruschig

• Decision Date: 22 June 1967
• Docket Number: Patent Appeal No. 8071.
• Citation: 379 F.2d 990
• Parties: Application of Heinrich RUSCHIG, Walter Aumuller, Gerhard Korger, Hans Wagner, Josef Scholz and Alfred Bander.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

379 F.2d 990 (1967)

Application of Heinrich RUSCHIG, Walter Aumuller, Gerhard Korger, Hans Wagner, Josef Scholz and Alfred Bander.

Patent Appeal No. 8071.

United States Court of Customs and Patent Appeals.

June 22, 1967.

Eugene O. Retter, Kalamazoo, Mich., John Kekick (Sidney W. Russell, Washington, D. C., of counsel), for appellants.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents.

Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and WILLIAM H. KIRKPATRICK.^*

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claim 13 of application serial No. 601,107, filed July 31, 1956, for "New Benzene Sulfonyl Ureas and Process for Their Preparation" Apparently The Upjohn Company has been prosecuting the application.

This case is a sequel to our decision in In re Ruschig, 343 F.2d 965, 52 CCPA 1238, decided April 22, 1965. There we reversed a rejection of twelve claims of this same application based on prior art. The claim on appeal is one of those claims. It reads:

13. N-(p-chlorobenzenesulfonyl) -N'-propylurea. That compound is structurally identified as

It is known by the generic name chlorpropamide and is sold under the trademark Diabinese by Chas. Pfizer & Co., Inc., as an oral medication for the control of diabetes mellitus, as more fully explained in our previous opinion, wherein we also had occasion to discuss the claim 13 compound which is again before us. We refer to that opinion for a more complete exposition of the chemical nomenclature and further background.

The sole issue on this appeal is whether claim 13 is supported by the disclosure of appellants' application, a question which had not been raised in this case at the time of the prior appeal. The following events gave rise to the issue.

About a year after the present application was filed, the examiner suggested claim 13 to applicants for purposes of interference with a Pfizer application filed by McLamore, serial No. 660,064 of May 20, 1957, and September 25, 1957, the claim was added. Interference 89,091 was declared and in it McLamore moved to dissolve on the ground, inter alia, that the claim was not supported in the application at bar. The examiner held the claim was supported and denied the motion. On reconsideration, he adhered to his decision. (The suggestion of the claim and these two decisions on motions are referred to by appellants as three rulings in their favor by the Patent Office, nearly ten years ago, on the present issue.) Later the examiner dissolved the interference on his own motion on the ground claim 13 was unpatentable to the interference parties over prior art. Meanwhile both appellants and McLamore had filed divisional applications claiming methods of treating diabetes and compositions therefor, appellants' application being serial No. 185,865, filed April 9, 1962. It had two sets of claims, 1-4 for tablets and 5-8 for method of treatment. Claims 3 and 7 specified the same compound as that of claim 13. These claims were under rejection by reason of one-year statutory bars which could be overcome only by reliance on the filing date of the present parent application which gave rise to the question whether the application contained support for the claims. In an appeal to the board in application 185,865, by an opinion of March 4, 1965, the board, having gone into the application and interference history, held that claims 3 and 7 in that application did not have support in the present application because the claim 13 compound is not disclosed therein and issued a new rejection under Rule 196(b) on that ground.¹

After our decision on the prior appeal, in which we reversed the rejection on prior art, the application was returned to the examiner. Since he knew of the board's action in the other application holding that the disclosure does not support the compound of claim 13, he requested and obtained from the First Assistant Commissioner authorization to reopen the case to reject claim 13 on the new ground of lack of support, which he did on June 15, 1965, as follows:

In view of the decision of the Board of Appeals of March 4, 1965 in Serial No. 185,865, holding that claims 3 and 7 therein were not supported by the disclosure of the instant case and hence not entitled to the benefit of the date thereof, claim 13 herein which is specific to a compound, the use of which is recited in claims 3 and 7, supra, is rejected as having no specific support in this disclosure for reasons fully detailed in said decision (Appeal No. 283-74), Paper No. 25, at pages 4-7. The compound of claim 13 is not named or identified by formula and it can find support only as choices made between the several variables involved. This is not regarded as adequate support for a specific compound never named or otherwise exemplified in the specification as filed. See In re Fried 1963 C.D. 248 (page 257, first paragraph 50 CCPA 954, 312 F.2d 930, 136 USPQ 729).

Appellants then argued this rejection before the examiner who adhered to it and made it final. Reconsideration was requested and given, the examiner adhering to his view. Appellants then took the question to the board where the examiner filed an extensive Answer to their lengthy brief. The board affirmed for very much the same reasons as those stated in its opinion in deciding the same issue in application serial No. 185,865. Thus the question before us has been twice decided adversely to appellants by the Board of Appeals, the same panel hearing both appeals.²

In coming here, appellants raise a question in addition to the issue of support which requires preliminary consideration. They say that in this second appeal "involving the same and already adjudicated Claim, the United States Patent Office was without authority, or lacked jurisdiction, to reopen these proceedings (after the Court's decision) to resurrect a ground of rejection which had already been considered by the Patent Office, this lack of authority being based upon principles of, or akin to, res judicata, estoppel or laches."

In answer, the solicitor says there is no such issue before us since it was not raised before the board, is raised for the first time in this court, and was not properly raised by any reason of appeal. Appellants counter with the argument that Reason of Appeal 9, reading, "The Board of Appeals erred in matters of law," will suffice. They also say that, being a matter of "jurisdiction over subject matter," it can be raised at any time.

We pass these ingenious and technical legal arguments since we prefer to say that we have considered the numerous cases relied on by appellants to support their proposition that the Patent Office cannot make this rejection because many years ago an examiner ruled to the contrary and find the point lacking in merit and unsupported by authority. We appreciate the extensive memorandum of law supplied in the appendix to appellants' brief, containing cases pro and con, and note the heavy reliance on what was said in two concurring opinions. We surmise appellants would have to agree that what precedents they have found are not, as a whole, very strong support for their theory. The words of Judge Garrett in In re Ellis, 86 F.2d 412, 24 CCPA 759, which appellants found quoted in In re Becker, 101 F.2d 557, 26 CCPA 922, fairly depict the present situation, which is not much different from that prevailing in 1936,

There is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view.

The life of a patent solicitor has always been a hard one.

Appellants insinuate that in our former decision in this case we found all the claims, including claim 13, patentable. Their words are, "Presently appealed Claim 13 was also indicated as allowable by this Court." They also say that this application "was returned by this Court to the Patent Office for issuance * * *." We did neither of these things. We passed on a rejection on prior art, affirmed by the board, found it in error, and reversed the board decision. Nothing more. Under 35 U.S.C. § 144 the only effect of our decision was to govern further proceedings in the case.

Appellants concede that the Patent Office can reopen a case returned by this court after appeal and reject claims on newly found prior art and attempt to distinguish the present situation on the ground that the rejection now applied is not based on newly found art but on the specification which has been available since the application was filed. Further, they say the very question was adjudged in their favor long ago. We are unable to see that these differences have legal significance. See In re Citron, 326 F.2d 418, 51 CCPA 869. For related views on res judicata as applied to patent prosecution see our recent opinions in In re Herr, 377 F.2d 610, 54 CCPA ___. We hold the Patent Office had the jurisdiction and the authority to reopen prosecution and to reject claim 13 on a new ground, to the merits of which rejection we now pass.

We have quoted the examiner's rejection above. His first point was that the compound of claim 13 "was not named or identified by formula" in the specification. Appellants admit this. His next point was that it "can find support only as choices made between the several variables involved." These words are the words of Judge Smith in In re Fried, supra, a case in which we found lack of support in general disclosures. Their purport in the factual context of this case is that the reagents for the preparation of chlorpropamide are listed, with many others, in the disclosure and, as the board said, "If the proper choices of the three variables in the above formula are made, the compound in question is produced," the formula referred...