APPLICATION OF WILDER
| Decision Date | 13 October 1977 |
| Docket Number | Patent Appeal No. 76-706. |
| Citation | 563 F.2d 457 |
| Parties | Application of Gene R. WILDER. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Ellsworth H. Mosher, Arlington, Va., attorney of record, for appellant, Edward P. Grattan, St. Louis, Mo., Richard O. Zerbe, Akron, Ohio, of counsel.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Jack E. Armore, Washington, D. C., of counsel.
This appeal is from the April 30, 1976 decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claim 1, the sole claim in application serial No. 249,118,1 filed May 1, 1972, for "N-(1,4-Dimethylamyl)-N'-Phenyl-P-Phenylenediamine," as obvious under 35 U.S.C. § 103 in view of Biswell.2 We affirm.
Appellant claims a single chemical compound which is useful as an antidegradant in rubber and has minimal toxicity to human skin. As appellant points out in his specification, there is a long-term art recognition that N-alkyl-N'-phenyl-p-phenylenediamine compounds3 inhibit the aging of natural rubber, and a more recent recognition that N-isopropyl-N'-phenyl-p-phenylenediamine 4 inhibits exposure cracking of snythetic rubbers. However, the N-isopropyl compound is a skin-sensitizer, and is volatile enough to cause skin eruption among workers processing rubber, according to appellant. Appellant has discovered that there is a dramatic disappearance of toxicity if the alkyl substituents contain six or seven carbon atoms,5 and more particularly if the alkyl is one of two specific radicals. During prosecution, appellant submitted numerous affidavits and test results as evidence of the unexpected absence of skin toxicity displayed by these compounds. Claim 1, the sole claim, is directed to a compound with one of the two specific alkyl radicals having seven carbons:
1. N-(1,4-dimethylamyl)-N'-phenyl-p-phenylenediamine.
Biswell, the sole reference relied on by the examiner and the board, discloses that N-(sec-alkyl)-N'-phenyl-p-phenylenediamine compounds6 in which the secondary alkyl group contains from three to eleven carbon atoms are useful as improved gasoline stabilizers which inhibit gum formation while retarding deterioration of "tetraalkyl lead." Members of that class of compounds in which the secondary alkyl group contains up to and including seven carbon atoms are said to be particularly effective, and numerous specific compounds are mentioned including N-(1,3-dimethylbutyl)-N'-phenyl-p-phenylenediamine and N-(1-methylhexyl)-N'-phenyl-p-phenylenediamine, a homologue and a structural isomer of the claimed compound, respectively.7
The claim on appeal and the reference deal with compounds whose structures can be visualized from the following chart:
Several alternative methods of preparation are described, some of which appellant refers to in his application as "well-known production techniques."
In his final rejection, the examiner asserted that the claimed invention would have been obvious within the meaning of 35 U.S.C. § 103, in view of the fact:
that (1) the compound is structurally obvious, (2) that the compound is prepared by a similar process, (3) that the prior art compounds would be expected to possess similar properties, as is in fact shown by the decision In re Wilder, note 1 supra and (4) that the mere showing of an advantage in a specific use is not sufficient to lend patentable significance to a compound this closely related as set forth in numerous decisions.
In his answer before the board, the examiner argued that decreased toxicity is not a sufficient difference over the prior art to render the claimed compound unobvious, since the claimed compound could be used as a gasoline additive, and that the appellant had failed to show the claimed compound to be a better rubber antidegradant than the isomer or homologue of the prior art.
The board found that "the Examiner has made out a strong case of prima facie obviousness," and "that appellant has failed to adequately rebut * * * that prima facie case." The board pointed out that, while appellant's affidavit evidence demonstrated a reduced skin irritation using the claimed compound as compared to N-(1-methylhexyl)-N'-phenyl-p-phenylenediamine (the isomer) disclosed by Biswell, the evidence also illustrated that N-(1,3-dimethylbutyl)-N'-phenyl-p-phenylenediamine (the homologue) is a lesser irritant than the claimed compound. Based on all the evidence, the board found that "appellant has failed to prove that the compound here claimed possesses unobvious properties relative to the compounds taught by the prior art of record."
The board also found that the decision in In re Wilder, supra note 1, (Wilder I) was not dispositive of the question of patentability of the present claim to the compound per se. In Wilder I, this court reversed an obviousness rejection of a claim to a rubber composition containing the presently claimed compound. The board noted that the examiner used different prior art in this case, prior art which is evidence of the existence of structurally similar compounds and their utility as gasoline stabilizers, and noted, further, that appellant's evidence of unobvious results does not relate to that utility. The board also stated that combining the prior art found in this and the earlier case, taken together, "tends to disprove any unobvious results for the claimed compound relative to the most structurally similar compounds of the prior art, when they are used in rubber compositions."
Appellant contends that nothing in Biswell remotely suggests using any of the structurally similar prior art compounds as rubber antidegradants, and that they would exhibit the absence of a skin-sensitizing property when used for that purpose. He also asserts that the minimal skin-sensitizing property of the claimed compound as compared to the prior art isomeric compound is more probative of unobviousness because the isomer is structurally closer to the claimed compound than the homologue. Appellant believes that the diverse test results of the homologue and the isomer as to skin sensitivity highlight the "utter lack of predictability in this art," and render appellant's discovery of the property unobvious even though one of the old compounds inherently possessed it.
Appellant also argues that the board is effectively attempting to overrule this court's decision in Wilder I. He notes that the sole reference in that earlier case, a patent to Stahly,8 identically discloses the same two compounds relied upon by the board from Biswell, and that Stahly is actually more pertinent to the presently claimed invention. Since Stahly "was fully considered and rejected as a reference against the real invention represented by the claim here on appeal years ago in the Wilder I case," appellant argues, "this Court should overrule what appears to be an attempt by the Board of Appeals to come in through the back door and achieve in effect a different result from that reached on claim 7 in Wilder I." Finally, appellant asserts in his reply that the PTO has improperly relied on the absence of toxicity in the prior art homologue, when that property was in fact discovered by appellant, and was, therefore, not part of the prior art.
The solicitor agrees with the board that Biswell presents a strong case of prima facie obviousness against appellant's claim, which was not rebutted by appellant's affidavit evidence. Relying on In re Hoch, 428 F.2d 1341, 57 CCPA 1292, 166 USPQ 406 (1970), and the proposition, often stated by this court, that a compound and its properties are inseparable, the solicitor concludes:
There is no logical basis for distinguishing patentably between a prior art compound and a claimed novel compound prima facie obvious therefrom, even where a previously unknown or unobvious use has been found, where that use nevertheless inheres in both compounds and it is the compound per se...
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