Application of Schechter
Decision Date | 03 June 1953 |
Docket Number | Patent Appeal No. 5935. |
Citation | 98 USPQ 144,205 F.2d 185 |
Parties | Application of SCHECHTER et al. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
T. A. Seegrist, Washington, D. C. (L. M. Mantell, Washington, D. C., of counsel), for appellants.
E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.
Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Judges.
This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the action of the Primary Examiner in finally rejecting claims 17, 19, 20, 21, 23, 46, 47 and 48 of appellants' application, serial No. 75,282, for a patent on "Synthesis of 4-Hydroxy-2-Cyclopenten-1-Ones." All appealed claims are product claims. Twelve method claims and one product claim, claim 18, were allowed by the examiner.
Claims 19, 20, 21 and 23 have been rejected as drawn to non-elected species and that rejection is not challenged by appellants. Accordingly, those claims will not be considered on their merits by this court. See In re Jones, 162 F.2d 638, 34 C.C.P.A., Patents, 1168.
Appealed claims 17, 46, 47 and 48 read as follows:
"17. A synthetic cyclopentenolone of the formula:
in which R' is a radical taken from the group consisting of alkyl, alkenyl and aryl and R is an alkenyl radical other than 2-butenyl and 2, 4-pentadienyl.
in which R is a hydrocarbon radical taken from the group consisting of those having less than four and those having more than five carbon atoms, the R radical having at least one olefinic double bond, and in which R' is a hydrocarbon radical.
The present application relates to the preparation of a new class of synthetic organic compounds called cyclopentenolones, which are used as intermediates in the synthesis of pyrethrinlike insecticides by esterifying the said cyclopentenolones. Appellants state that they believe they are the first to succeed in synthesizing pyrethrinlike insecticides. Heretofore, according to appellants, the sole source of pyrethrin insecticides has been from the natural products, mainly from the pyrethrum flower, grown primarily in Kenya Colony, Africa. It appears from the record that this class of natural insecticides consisted of two known natural pyrethrins and two natural cinerins.
The preparation of the cyclopentenolones here claimed required the synthesis of a new class of hydroxydiketone compounds to be used as starting materials. Those starting material compounds are covered by allowed claims in appellants' divisional application, serial No. 168,142, which has issued as U. S. Patent No. 2,574,500.
The final synthetic pyrethrinlike insecticides which are esters of the cyclopentenolones of the appealed claims are covered in allowed claims in another divisional application, serial No. 161,481, issued as U. S. Patent No. 2,603,652.
Appellants claim the inventions of these three applications have led to a new industry devoted to production of synthetic pyrethrinlike insecticides having special desirable properties not possessed by the natural pyrethrins.
The process required to make the claimed cyclopentenolones essentially comprises the following steps: Pyruvaldehyde (CH3 COCHO), or other substituted glyoxal, is reacted with a sodium salt of a beta-keto acid thereby yielding a hydroxydiketone of the type covered in appellants' patent No. 2,574,500. The hydroxydiketone so produced is cyclized to yield the cyclopentenolones of the appealed claims by treating them with a cyclizing agent, such as an aqueous alkali, in accordance with the method of the allowed process claims in the instant case.
The sole reference relied on by the Patent Office tribunals is:
LaForge et al., Journal of the American Chemical Society, vol. 69, page 186, January 1947.
The LaForge et al. article discloses that the alcoholic-ketonic components of the natural pyrethrins have been shown to consist of pyrethrolone and cinerolone which are cyclopentenolones probably having the structure
wherein R is the 2,4 pentadienyl radical (-CH2-CH=CH-CH=CH2), and the 2-butenyl radical (-CH2-CH=CH-CH3), respectively. These keto-alcohol components are made through scission, i. e., breaking down, of the natural pyrethrins which are esters of the said keto-alcohol components. Hence, as the examiner pointed out, the old compounds pyrethrolone and cinerolone are not actually "natural" compounds, but they have been consistently identified as such by the examiner, the board, and appellants, apparently for convenience.
All of the appealed claims have been rejected by the examiner as unpatentable over the LaForge et al. reference. The examiner also rejected claims 17, 46, and 47 as indefinite, and claim 48 was rejected as setting up an improper Markush group. The board affirmed all of these rejections for substantially the same reasons advanced by the examiner.
In rejecting claim 17 as indefinite, the examiner stated:
Claim 47 was rejected as indefinite similarly to claim 17.
Appellants concede here, as they did before the Patent Office tribunals, that the LaForge et al. article discloses two cyclopentenolone compounds of the type recited in claim 17 in which R is 2-butenyl and 2, 4-pentadienyl, respectively. Appellants strongly contend, however, that a claim such as claim 17 is permissible in the circumstances of this case because there are critically novel and inventive patentable differences between the prior art and appellants' claimed cyclopentenolones.
A large number of points are presented by appellants to support this contention. Those points will subsequently be discussed in considering appealed claim 48.
Even if there is a critically novel and inventive patentable difference between the prior art and their invention here claimed, as appellants contend, we think this contention is not actually in point insofar as the rejection of claim 17 as indefinite is concerned.
Under R.S. § 4888, it was required that the inventor "shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." This provision has been carried forward into § 112, Title 35, U.S.C. (1952) with slight modification of language.1
In the light of the prior art of record, the italicised portion of claim 17 is an attempt by appellants to claim their invention by excluding what they did not invent rather than by particularly and distinctly pointing out what they did invent. Further, it is clear that claim 17 is a broad generic claim in which appellants are seeking to establish a monopoly to all such cyclopentenolones, whether known or unknown, excepting the two prior art compounds which are recited in the italicised exclusionary clause of claim 17.
In view of this, we think the examiner properly regarded the italicised portion of claim 17 as a negative limitation. We are also of the opinion that this renders the claim indefinite and unpatentable. In re Rose, supra. See also In re Langdon, supra. As this court pointed out in the Rose case, the basic objection to use of expressions of this kind is that there is a failure to comply with the statutory requirement that the applicant shall in his claims particularly point out and distinctly claim his invention when all he does is claim everything, whether known or unknown, except that which is shown in the prior art.
To support their above-noted contention that they have disclosed subject matter which is patentably inventive over the prior art, appellants have argued that there is a high degree of unpredictability in the insecticide art. Appellants have stated in the record herein that there are many instances when isomers and analogues of excellant known insecticides have proven ineffective as insecticides. This being the case, it seems particularly clear that appellants have not complied with the statute by claiming all but what was previously known.
The examiner rejected claim 47 as indefinite similarly to claim 17. This claim excludes those cyclopentenolones wherein the alkenyl radical has four or five carbon atoms while including all others. The 2-butenyl radical and the 2, 4-pentadienyl radical disclosed in LaForge et al. art alkenyl radicals having four and five carbon atoms, respectively. Thus, in claim 47, as in claim 17, appellants seek to claim all such compounds, whether known or unknown, excepting those which are shown in the prior art.
Although the italicised portion of claim 47 is affirmative in form, it is clearly a negative limitation in substance. In determining whether part of a claim is a negative limitation of the type which renders a claim fatally indefinite, we must look to the...
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