Application of Surrey

• Decision Date: 15 December 1966
• Docket Number: Patent Appeal No. 7536.
• Parties: Application of Alexander R. SURREY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

151 USPQ 724, 370 F.2d 349 (1966)

Application of Alexander R. SURREY.

Patent Appeal No. 7536.

United States Court of Customs and Patent Appeals.

December 15, 1966.

Laurence & Laurence, Washington, D. C. (Dean Laurence, Herbert I. Sherman, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the rejection of claim 17 in appellant's application¹ entitled "4-Thiazolidones and Oxide Derivatives Thereof."

The subject matter is evident from the claim, to which we have added emphasis to indicate the particular language giving rise to the issues of sufficiency of disclosure and new matter before us:

17. A compound of the formula

where Ar is a member of the group consist of phenyl, naphthyl, biphenylyl, furyl, pyridyl, pyrimidyl, thiazolyl, oxazolyl, quinolyl, isoquinolyl, and thienyl radicals and such radicals substituted by one to three substituents selected from the group consisting of lower-alkyl, lower-alkoxy, lower-alkylmercapto, lower-alkylsulfonyl, halo, trifluoromethyl, nitro, amino, lower-alkylamino, lower-alkanoylamino, phenoxy, benzyloxy, hydroxy, phenylmercapto, benzyl and 4-chlorophenoxy, Y is polycarbon-lower-alkylene having from two to six carbon atoms and having its two free valence bonds on different carbon atoms, Y\' is a member selected from the group consisting of a direct linkage and lower-alkylene having from one to six carbon atoms, Q is a member selected from the group consisting of lower-alkyl having from one to six carbon atoms, unsubstituted-phenyl and phenyl substituted by one to three substituents selected from those given hereinabove for the aromatic radical at the 2-position of the thiazolidone ring, Z is a member selected from the group consisting of S, SO and SO2, and R1 and R2 each is selected from the group consisting of hydrogen and lower-alkyl.

In summarizing the examiner's rejection the board stated:

Claim 17 stands rejected as failing to define the invention in the manner required by 35 U.S.C. 112. The Examiner considers that the compounds recited in claim 17 lack adequate representative basis in the disclosure and that the claim is accordingly too broad and unduly speculative.

As an example of the contended lack of adequate representative basis in the disclosure for the compounds recited in the Markush group of the appealed claim the Examiner cites the oxazolyl member. The Examiner states that the claimed compounds include the class of 2-oxazolylthiazolidones wherein the oxazolyl radical may be substituted by one to three substituents selected from the group consisting of lower alkyl, lower alkoxy, lower alkylmercapto, lower alkylsulfonyl, halo, trifluoromethyl, nitro, amino, lower alkylamino, lower alkanoylamino, phenoxy, benzyloxy, hydroxy, phenylmercapto, benzyl and 4-chlorophenoxy. The Examiner states that the only support in the specification for an unsubstituted oxazolyl compound is the (4-oxazolyl) compound disclosed * * *, its oxide * * * and its dioxide * * *. The Examiner states that there are no examples of a substituted oxazolyl compound to support the various classes of oxazolyl compounds having 1 to 3 of the various substituents listed in the appealed claim.

The Examiner further states that there are no representative examples of substituted pyrimidyl, quinolyl, isoquinolyl, or thiazolyl compounds, and that many of the classes of naphthyl, biphenylyl, furyl, thienyl and pyridyl are not represented.

It agreed with the examiner's finding that the specification did not adequately teach and fully illustrate the subject matter of the claim, stating that it could not find wherein the specification does in fact give examples to support many of the various classes of carbocyclic and heterocyclic "Ar" radicals having 1-3 substituents of the nature listed in the claim.

Whether a broad claim to chemical compounds is sufficiently supported by the disclosure as a whole, including compounds named and examples given in the specification, has frequently been considered by this court. In re Cavallito (PA 6502), 282 F.2d 357, 48 CCPA 711; In re Cavallito (PA 6508), 282 F.2d 363, 48 CCPA 720; In re Sus, 306 F.2d 494, 49 CCPA 1301; In re Cavallito (PA 6822), 306 F.2d 505, 49 CCPA 1335. That Congress intended adequate disclosures to support claims is clear from the positive language of 35 U.S.C. § 112:

§ 112. Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. * * * (Emphasis supplied).

In applying those requirements, we stated in In re Cavallito (PA 6508 and 6822):

* * * The sufficiency of a disclosure depends not on the number but rather on the nature of the claimed compounds per se and the nature of the supporting disclosures. If a claim covers compounds which are closely related, a comparatively limited disclosure may be sufficient to support it. If, however, the claim covers compounds which are related only in some structural respects, a more extensive supporting disclosure may be necessary to support it. Moreover, the selection of the examples and other exemplary material used as the disclosure to support a claim must be adequately representative of the area covered by it. In some instances a limited disclosure which is typical of various areas covered by a claim may be of greater value in determining the patentable characteristics of the claimed compounds than a more extensive disclosure would be if related only to a limited portion of the area.

We turn, then, to an analysis of the "written description of the invention" in appellant's specification to determine if it does provide adequate representative basis for the compounds of the claim.

Appellant discloses certain 2-aromatic-4-thiazolidones, their -1-oxides and -1,1-dioxides having the formula

While the radical "Ar" is defined in the specification as an aromatic radical possessing the carbocyclic or heterocyclic ring structures substantially as enumerated in claim 17, preferred compounds are said to be those in which "Ar" is a radical of the benzene series, viz., a phenyl radical. Appellant then describes the nature and scope of the substituents which may be placed on the phenyl radical, again in language corresponding, for the most part, to that employed in claim 17. Appellant then states:

The other aromatic radicals, e. g., naphthyl, biphenylyl, furyl, pyridyl, thienyl, etc., radical can be unsubstituted or substituted by substituents as illustrated above as substituents of the phenyl radical.

After further defining the nature and scope of Y, Y', Q, Z, R1 and R2 appearing in claim 17, about which no question is raised here, and also setting forth in general terms the procedure employed to synthesize the compounds, appellant devotes most of the remainder of his specification to details as to how some 150 specifically named compounds "were prepared" or "can be prepared" by following the steps of four examples. Appellant has included in the record a convenient summary of that specific disclosure, our adaptation of which follows:

                                        Table A — Carbocyclic Compounds which
                                                   "Were Prepared"
                      Ar                   Z                 Y-O-Y'-Q                     R1=R2+H
                  3,4-Cl2-phenyl           S, SO, SO2       (CH2)2OCH3
                  2-Cl-phenyl              S, SO, SO2       (CH2)2OCH3
                  4-Cl-phenyl              S, SO, SO2       (CH2)2OCH3
                  2,4-Cl2-phenyl           S, SO, SO2       (CH2)2OCH3
                  4-CH3 O-phenyl           S, SO2           (CH2)2OCH3
                  phenyl                   S, SO, SO2       (CH2)2OCH3
                  3,4-Cl2-phenyl           S, SO, SO2       (CH2)3OCH3
                  3,4-Cl2-phenyl           S, SO            (CH2)2OCH2H5
                  3-Cl-phenyl              S, SO, SO2       (CH2)2OCH3
                  4-(4-NO2C6H4O)-phenyl    S                (CH2)2OCH3
                  4-n-C4H9 O-phenyl        S, SO            (CH2)2OCH3
                  4-NO2-phenyl             S, SO, SO2       (CH2)2OCH3
                  3,4-(CH3)2-phenyl        S, SO            (CH2)2OCH3
                                     Table B — Carbocyclic Compounds which
                                                   "Can Be" Prepared
                                           Z=S, SO
                      Ar                    or SO2           Y-O-Y'-Q                     R1=R2=H
                  2-CH3phenyl                               CH2CH(CH3)OCH3
                  4-i-C3H7-phenyl                           (CH2)2OC3H7-i
                  4-I-phenyl                                (CH2)2OC4H9-n
                  3-Br-phenyl                               (CH2)2OC6H13-n
                  2,4,6-Cl3-phenyl                          (CH2)4OCH3
                  4-CH3O-phenyl                             (CH2)6OC2H5
                  3-C2H5O-phenyl                            (CH2)3OC3H7-n
                  3,4-(CH3O)2-phenyl                        (CH2)3OC2H5
                  3-Cl-4-CH3O-phenyl                        (CH2)2OCH3
                  4-n-C3H7S-phenyl                          CH2CH(C2H5)OC2H5
                  4-n-C4H9SO2-phenyl                        (CH2)2OCH3
                  3-CF3-phenyl                              (CH2)2OC2H5
                  4-CH3CONH-phenyl                          (CH2)3OCH3
                  4-NH2-phenyl                              (CH2)2OCH3
                  4-n-C4H9NH-phenyl                         (CH2)2OCH3
                  4-C6H5O-phenyl                            (CH2)2OC2H5
                  3-C6H5CH2O-phenyl                         (CH2)3OC2H5
                  2-HO-phenyl                               (CH2)2OCH3
                  4-C6H5S-phenyl                            (CH2)2OCH3

...