Application of Schaumann

Decision Date23 February 1978
Docket NumberAppeal No. 77-598.
PartiesApplication of Wolfgang SCHAUMANN, Wolfgang Bartsch, Egon Roesch, Werner Guthlein, and Franz Braun.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Burgess, Dinklage & Sprung, New York City, attorneys of record, for appellants; Leonard Horn, New York City, of counsel.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.

ALMOND, Senior Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board), one member dissenting, affirming the rejection of claims 2-4 of appellants' application serial No. 336,567, filed April 17, 1975, for "1-(3-Hydroxyphenyl)-2-Aminopropane Compounds and Chemotherapeutic Compositions." We affirm.

The Invention

The claims on appeal are drawn to a single chemical compound, and certain pharmacologically compatible salts thereof, disclosed as being effective in increasing peripheral blood pressure in mammals without causing a significant pressure increase in pulmonary circulation or bradycardia.1

Claim 2 reads:

Compound * * * designated DL-1(3-hydroxyphenyl)-2-ethylaminopropane.2

Claims 3 and 4 are directed, respectively, to the hydrobromide and hydrochloride salt of DL-1-(3-hydroxyphenyl)-2-ethylaminopropane (HEP). The compound itself has the following structural formula:

The Prior Art

The sole reference relied upon by the examiner and the board as evidence of the unpatentability of appellant's claims is patent No. 2,344,356, issued to G. Hildebrandt on March 14, 1944. Hildebrandt discloses a class of ß-(meta-hydroxyphenyl)-isopropylamines3 of the general formula:

wherein "R designates hydrogen, an alkyl radical, for example methyl, ethyl, propyl, isopropyl, butyl, isobutyl, isoamyl, etc. or a cycloalkyl radical, for example cyclohexyl, ortho-, meta- or para-methylcyclohexyl, tetrahydronaphthyl, decahydronaphthyl etc."

With respect to utility, Hildebrandt's specification states that ß-(meta-hydroxyphenyl)-isopropylamines in general possess "favorable therapeutic properties" similar to ß-(parahydroxyphenyl)-isopropylemethylamine,4 which is described as physiologically active, exerting effects similar to those of ephedrine."5

The only compound falling within the above general formula that is exemplified by Hildebrandt is ß-(meta-hydroxyphenyl)-isopropylmethylamine, which happens to be the lower adjacent homologue of HEP. Hildebrandt's specification teaches how to make ß-(meta-hydroxyphenyl)-isopropylmethylamine as the free base, or as the hydrochloride salt thereof, and it also states that other ß-(meta-hydroxyphenyl)-isopropylamines may be made by the same method. Claim 1 of the Hildebrandt patent reads:

The chemical compounds ß-(meta-hydroxyphenyl)-isopropylamines of the formula

wherein R is a lower alkyl radical.

We note in passing that appellants' application mentions the Hildebrandt patent in a discussion of the prior art, and points out that

Our investigations of prior art compounds, including the lower adjacent homologue of HEP have shown that, in addition to the desired increase of the blood pressure in the peripheral circulation, a considerable increase of the blood pressure in the pulmonary circulation also occurs as a clinically uncontrollable side effect or, at the same time, causes bradycardia.

According to appellants, such undesirable side effects are negligible when HEP is administered.

Proceedings Below

Claims 2, 3, and 4 stand rejected under 35 U.S.C. § 102(b), the examiner's contention being that Hildebrandt's description of a limited class of compounds encompassing HEP is sufficient under the statute to "fully anticipate the claims in the instant application under the doctrine set forth in In re Petering, 49 CCPA 993, 301 F.2d 676, 133 USPQ 275 1962."

In response to appellants' primary argument that the general formula of Hildebrandt's specification cannot constitute an anticipation of every one of the one hundred and five or more compounds encompassed thereby, the examiner noted that the method disclosed by Hildebrandt for producing ß-(meta-hydroxyphenyl)-isopropylamines would result only in the production of secondary amines,6 thus limiting to fourteen the number of possible compounds taught by the reference. That number is further reduced to seven, said the examiner, if one considers the preference for lower alkyl secondary amines expressed in claim 1 of the reference.

With respect to the affidavit of appellant Roesch, submitted under 37 CFR 1.132 to substantiate the alleged superiority (i. e., greater effectiveness in increasing peripheral blood pressure without aforementioned side effects) of HEP as compared with the lower homologue of Hildebrandt, the examiner stated that "a showing over the adjacent homolog is not sufficient to overcome the teachings of the prior art * * *."

A majority of the board affirmed the 35 U.S.C. § 102(b) rejection, noting that the structural formula of Hildebrandt's claim 1 contains but a single variable, R, defined as "a lower alkyl radical," and that the expression "alkyl radical," as set forth in the specification, includes, inter alia, ethyl.

The dissenting board member, however, voiced the following opinion:

It is axiomatic to me that for a rejection to properly lie under 35 USC 102 a disclosure which identically describes the claimed invention must exist. Such is clearly now the view of the CCPA, as noted in ? In re Arkley et al, 59 CCPA 804, 455 F.2d 586, 172 USPQ 524 1972 * * *. By having to select an ethyl radical from among the many possibilities which R in the structural formula given by Hildebrandt may be, in my view, does not give rise to the claimed compound being fully anticipated by the reference. The question is, as is emphasized by the Court sic even in the earlier case of In re Ruschig et al, 54 CCPA 1551, 379 F.2d 990, 154 USPQ 118 1967, is the claimed compound described in the reference, that is does its specification convey clearly to one skilled in the art the information that patentee invented that specific compound. * * *
If the view of the majority were to prevail it must be said that patentee also invented 1-(3-hydroxyphenyl)-2-propylaminopropane * * *, as well as 1-(3-hydroxyphenyl)-2-isoamylamine sic and could have claimed these specific compounds. Such a conclusion, on its face, must manifestly be held as being contrary to existing law. Emphasis in original.
OPINION

As stated by the board, the issue herein is "whether the total disclosure of the reference identifies the claimed ethylamine compound with sufficient specificity to constitute a description thereof within the purview of 35 USC 102(b)." However, a more fundamental question presented by this appeal is whether the disclosure of a chemical genus may ever constitute a description of a specific compound falling within the ambit of the genus.7

In essence, appellants are questioning the continued precedential value of In re Petering, 301 F.2d 676, 49 CCPA 993, 133 USPQ 275 (1962), wherein this court affirmed the rejection of a claim to a specific compound, 6, 7-dimethyl-9-ß-monohydroxyethyl-isoalloxazine, not simply on the basis of the generic disclosure of isoalloxazine derivatives contained in the Karrer reference,8 but because

the pattern of Karrer's specific preferences for the six variable substituents on the generic formula; see n. 8, supra in connection with his generic formula constitutes a description of a definite and limited class of compounds which may be defined with reference to the Karrer generic formula as follows: where X, P and R' are hydrogen, where Y and Z may be hydrogen or methyl, and where R is a member selected from the group consisting of -CH2OH, -CH2CH(OH)CH2OH, -CH2 CH2OH, -CH2(CHOH)3CH2OH and -CH2 (CHOH)4CH2OH. Footnote omitted.

Id., 301 F.2d at 681, 49 CCPA at 1000, 133 USPQ at 279-80.

Since the "pattern of preferences" permitted only two alternatives for Y and Z, a limited number of variations for R, no alternatives for the other ring positions, and a large unchanging structural nucleus, it was held that Karrer described to one skilled in the art a limited class of some 20 compounds, including 6, 7-dimethyl-9-ß-monohydroxyethyl-isoalloxazine, "as fully as if he had drawn each structural formula or had written each name." Id., 301 F.2d at 682, 49 CCPA at 1000, 133 USPQ at 280.

Appellants primarily rely on In re Ruschig, 343 F.2d 965, 52 CCPA 1238, 145 USPQ 274 (1965), to support their contention that In re Petering, supra, has been "vitiated." In Ruschig, two generic claims defining limited classes of benzenesulfonylureas were denied patentability on the basis of the broader generic disclosures of three references a U.S. patent to Martin et al., a French, and a Swedish patent,9 which were alleged to have anticipated the claimed subject matter. In reversing the rejection, this court said:

We did not intend our Petering opinion or decision to become a precedent for the mechanistic dissection and recombination of the components of the specific illustrative compounds in every chemical reference containing them to create hindsight anticipations with the guidance of an applicant's disclosures, on the theory that such reconstructed disclosures describe specific compounds within the meaning of section 102. Furthermore, we do not find the present case to be of the type we had before us in Petering. Even if we take the 10 examples of the French or the 12 examples of the Swedish reference, take them apart and recombine them into different compounds than those named, we do not get a small recognizable class with common properties. We would apparently get from the French patent some 130 and from the Swedish some 156 compounds. And in doing this we are not dealing with such closely related units as the H and CH3 and the five hydroxyalkyl components in Peteri
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