Application of Weber

• Decision Date: 30 June 1978
• Docket Number: Appeal No. 77-622.
• Citation: 580 F.2d 455
• Parties: Application of Rolf-Ortwin WEBER, Alfons Soder and Istuan Boksay.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

580 F.2d 455

Application of Rolf-Ortwin WEBER, Alfons Soder and Istuan Boksay.

Appeal No. 77-622.

United States Court of Customs and Patent Appeals.

June 30, 1978.

David R. Murphy, Arlington, Va., attorney of record, for appellants, Charles A. Wendel, Harold C. Wegner, Arlington, Va., on behalf of the Patent, Trademark and Copyright Section, Virginia State Bar.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents.

Fred E. McKelvey, Woodbridge, Va., for the Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

BALDWIN, Judge.

This appeal is from a decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) affirming the examiner's rejection of claims 1-6 "as being improper Markush claims¹ and misjoinder under 35 USC 121." ² The board also dismissed, for want of jurisdiction, the appeal of claims 8-13, 16, 17, 20, 22 and 23 in that the claims "were withdrawn from consideration since they were directed to non-elected inventions." We reverse and remand.

Invention

The invention relates to cyclic diamine derivatives which possess the common property of psychotherapeutic effectiveness. The derivatives are identified by a single generic formula expressed in Markush format in representative claim 1:

1. A compound having the general formula

or an acid addition salt thereof in which formula R1 is selected from the group consisting of

A) an at least mononuclear heterocyclic group having 4 to 10 carbon atoms in the ring system bound to the group -C-N through a carbon atom and containing at least one oxygen, nitrogen or sulphur atom,

B) substitution products of A) containing at least one substituent selected from the group consisting of halogen, trifluoromethyl, hydroxy, alkoxy of 1 to 3 carbon atoms, unsubstituted amino, amino substituted by up to two alkyl groups each having 1 to 3 carbon atoms and alkyl groups having 1 to 6 carbon atoms,

X is oxygen, sulphur or an NH-group,

Y is an alkylene group having 1 to 3 carbon atoms in the chain, or an alkylene group having 1 to 3 carbon atoms in the chain substituted by a) up to 3 alkyl groups each having up to 3 carbon atoms and a total of not more than 8 carbon atoms, or b) substituted by one or two phenyl groups,

R2 is selected from the group consisting of

C) an at least mononuclear carbocyclic or heterocyclic group having 4 to 10 carbon atoms in the ring system, containing but one heteroatom in a ring,

D) substitution products of C) containing at least one substituent selected from the group consisting of nitro, halogen, trifluoromethyl, alkyl having 1 to 6 carbon atoms, hydroxy, alkoxy having 1 to 3 carbon atoms, unsubstituted amino groups and amino groups substituted by up to two alkyl groups each having 1-3 carbon atoms,

R3 is hydrogen or up to two substituents selected from alkyl groups having up to 2 carbon atoms and phenyl groups;

n is 2 or 3.

Background

In the first office action dated January 17, 1974, the examiner "objected" to claims 1-6, 8-13 and 23 and required applicants to elect one of three groups of claims: group I (claims 7 and 14-22), group II (claims 8-13), or group III (claim 23). Applicants elected, with traverse, group I and brought to the examiner's attention his failure to include claims 1-6 in the groups. The status of claims 1-6 was clarified in the second and final action, dated December 26, 1974, in which those claims were "rejected." The examiner also stated that claim 1 embraced 24 enumerated independent and distinct inventions. The examiner, in conclusion, stated that:

Markush claims 1 to 6 are rejected as being improper Markush claims and for misjoinder under 35 U.S.C. 121. (922 O.G. 1016, 4th and 6th paragraph).³

In his Answer, the examiner expanded upon the basis of the rejection. He discussed MPEP 803, in particular the phrase "independent and distinct" of § 121 and applied the phrase to the claims. Continuing, the examiner discussed the Markush claims and stated:

The compounds embraced do not have a common nucleus and are improperly Markushed under the criteria set forth in M.P.E.P. 706.03(y) * * *.⁴ * * * The specification discloses that certain compounds have activities not shared by all of the scope claimed * * *.

At the outset, the board decided that § 121 was an adequate legal basis for the examiner to reject a single claim "embracing" more than one independent and distinct invention. In support thereof, the board incorporated two board decisions⁵ which discussed the interrelated rejections of "misjoinder under 35 U.S.C. 121" and "as being improper Markush claims" as applied here. The board analyzed the claims in light of those decisions and found them to contain multiple independent and distinct inventions.

Appellants argue before this Court that each of the claims is directed to but a single invention and § 121 is not a proper ground for rejection in any event.

OPINION

The board affirmed the examiner's rejection of claims 1-6 "as being improper Markush claims and misjoinder under 35 U.S.C. 121." However, the reasoning of the board shows that the analysis of the "improper Markush claims" rejection was to be supportive of the rejection under § 121 rather than alternative to it. We have jurisdiction over both rejections,⁶ but since the Markush rejection is inextricably intertwined with the § 121 rejection, we make no decision on the propriety of the Markush rejection and remand to the board for its consideration. However, the result of any such consideration must be consistent with our analysis of an applicant's rights under the second paragraph of 35 U.S.C. § 112.

An applicant is given, by the statute, the right to claim his invention with the limitations he regards as necessary to circumscribe that invention, with the proviso that the application comply with the requirements of § 112. We have decided in the past that § 112, second paragraph, which says in part "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," allows the inventor to claim the invention as he contemplates it. In re Wolfrum, 486 F.2d 588, 179 USPQ 620 (CCPA 1973).

As a general proposition, an applicant has a right to have each claim examined on the merits. If an applicant submits a number of claims, it may well be that pursuant to a proper restriction requirement, those claims will be dispersed to a number of applications. Such action would not affect the right of the applicant eventually to have each of the claims examined in the form he considers to best define his invention. If, however, a single claim is required to be divided up and presented in several applications, that claim would never be considered on its merits. The totality of the resulting fragmentary claims would not necessarily be the equivalent of the original claim. Further, since the subgenera would be defined by the examiner rather than by the applicant, it is not inconceivable that a number of the fragments would not be described in the specification.⁷

It is apparent that § 121 provides the Commissioner with the authority to promulgate rules designed to restrict an application to one of several claimed inventions when those inventions are found to be "independent and distinct." It does not, however, provide a basis for an examiner acting under the authority of the Commissioner to reject a particular claim on that same basis.

Even though the statute allows the applicant to claim his invention as he sees fit, it is recognized that the PTO must have some means for controlling such administrative matters as examiner caseloads and the amount of searching done per filing fee.⁸ But, in drawing priorities between the Commissioner as administrator and the applicant as beneficiary of his statutory rights, we conclude that the statutory rights are paramount. We hold that a rejection under § 121 violates the basic right of the applicant to claim his invention as he chooses.

Appellants contend that the examiner's action in withdrawing claims 8-13, 16, 17, 20, 22 and 23 from consideration as drawn to nonelected inventions constitutes a rejection under the holding of In re Haas, 486 F.2d 1053, 179 USPQ 623 (CCPA 1973), and, therefore, the board improperly found a lack of jurisdiction. We do not agree. Clearly our decision in In re Hengehold, 58 CCPA 1099, 440 F.2d 1395, 169 USPQ 473 (1971), disposed of the theory that a restriction requirement and the subsequent action of the examiner in withdrawing nonelected claims from consideration,⁹ per se, constitutes a rejection. An exception is found in In re Haas, supra, wherein we determined that the examiner's action in withdrawing claims was a rejection because the "claims were withdrawn from consideration not only in this application but prospectively in any subsequent application because of their content." 486 F.2d at 1056, 179 USPQ at 625. (Emphasis ours.) We do not understand the PTO to make such a holding with respect to claims 8-13, 16, 17, 20, 22 and 23, nor that appellants argue that the PTO does so. Indeed, we note that appellants admitted in their brief before the board that claims 8-13 and 23 were "properly withdrawable." Consequently, the board's dismissal of the appeal to claims 8-13 and 23 was correct. The Commissioner's brief admits that claims 16, 17, 20 and 22 contain species of the invention of generic claim 1 and would be provided an examination on the merits should the § 121 rejection be reversed. We remand for appropriate action on claims 16, 17, 20 and 22, and dismiss the appeal of claims 8-13 and 23 for lack of jurisdiction.

The decision of the board affirming the rejection under § 121 is reversed, and the case is remanded for consideration of the "improper Markush" rejection of claims 1-6 and appropriate action on claims 16, 17, 20 and 22. The appeal of claims 8-13 and 23 is dismissed for lack...