Application of Zickendraht
Decision Date | 27 September 1963 |
Docket Number | Patent Appeal No. 6873. |
Citation | 138 USPQ 22,319 F.2d 225 |
Parties | Application of Christian ZICKENDRAHT and Arthur Buehler. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
A. Ponack, Wenderoth, Lind & Ponack, Washington, D. C. (Harry Goldsmith, Bryant W. Brennan, Summit, N. J., Joseph Kolodny, Baltimore, Md., of counsel), for appellants.
Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.
Here the Board of Appeals has held that appellants have made but one patentable invention, therefore to grant the single claim involved in appellants' application1 entitled "New Metalliferous Azo Dyestuffs" would involve "double patenting." Appellants argue that the instant claim is patentably distinct over the reference and is, therefore, entitled to patent protection.
The application relates to metallized azo dyestuffs prepared by reacting a cobalt or chromium-yielding reagent with certain monoazo dyestuff, such that two molecules of the latter are joined or complexed per molecule of metal. According to appellants' specification, the monoazo dyestuff can be prepared by known methods, as by coupling, in an alkaline medium, a diazotized 2-amino-1-hydroxy-benzene-5-sulfonic acid amide, which may be referred to as the diazo component, with 1:3-diphenyl-5-pyrazolone, referred to as the coupling component. The metallized dyestuffs are said to be suitable for dyeing and printing a variety of materials such as silk, leather, wool and synthetic fibers of superpoly-amides, superpolyurethanes or polyacrylonitrile.
The claim reads:
1. The complex metal compound which contains one atom of one of the metals selected from the group consisting of cobalt and chromium bound in complex union to substantially two molecules of the dyestuff of the formula
The same day applicants filed the instant application, they filed another,2 which has since matured into a patent.3
Appellants' patent, like the instant application, also relates to metalliferous azodyestuffs prepared by treating certain monoazodyestuffs with an agent yielding cobalt or chromium under such conditions that a metalliferous dyestuff, which contains substantially two dyestuff molecules complexed per atom of the metal, is obtained. Claim 2 is representative of appellants' patented subject matter:4
The examiner rejected the claim "as lacking invention over the claims of Zickendraht et al." He was of the opinion the claimed compounds are the next lower homologues of the patented compounds, and since they did not patentably distinguish therefrom, allowance of "the instant claim would amount to double patenting."
In affirming the examiner, the board said:
The sole issue is whether the instant claim defines a patently distinct invention over that claimed in applicants' patent. The doctrine is well established that claims in different applications need be more than merely different in form or content; and that a patentable distinction must exist to entitle applicants to a second patent. In re Ockert, 245 F.2d 467, 44 CCPA 1024; In re Korpi, et al., 160 F.2d 564, 34 CCPA 956; In re Copeman, 135 F.2d 349, 30 CCPA 962; 57 USPQ 312.
There are two distinctions between the instant claim and those in appellants' patent. One is that in the appealed claim the sulfonamide group (-SO2NH2) is located para to the azo group, while in the patented claims its location is either unrestricted, or located meta to the azo group. The second is that in the patented claims at least one of the benzene rings must be substituted with a methyl, nitro, methoxy or chlorine group, while in the appealed claim the benzene rings contain no such substituents.
Appellants contend that those two distinctions constitute different inventive concepts. We fail to see why or how those differences can be considered patentable distinctions. They appear to us, as to the examiner and the board, to be merely a description of the factual differences, readily observable by one of ordinary skill in this field. Appellants have failed to show any conceptual difference, or to show that the differences are in any way material. With respect to the position of the sulfonamide group, the patented claims are generic, thus the group may be on any position. The patent disclosure, to which we may refer to understand the scope of the claims, In re Greenlee, 222 F.2d 739, 42 CCPA 926; In re Ward, 150 F.2d 436, 32 CCPA 1238, shows several azo dyes having the sulfonamide group located para to the azo group. Hence, the location of that group cannot represent a different inventive concept, nor a patentable distinction.
With regard to the second difference, i. e. substitution of the benzene rings, it was the examiner's position that the claimed compounds represent the next lower homologue of the patented compounds. We need not decide whether the compounds are properly labeled homologues. The name used to designate the structural relationship between related chemical compounds is not necessarily controlling; rather it is the closeness of that relationship, a question of fact, which is indicative of the obviousness or unobviousness of the new compound. In re Druey et al., 319 F.2d 237, 50 CCPA ___; In re Herr, 304 F.2d 904, 50 CCPA ___. Here the difference between the claimed compound and one of the patented compounds is merely the presence or absence of a methyl group on one of the benzene rings in a complex molecule. Appellants urge that the patent stresses that the diazo and coupling components must be selected to insure the production of an azo dye having at least one of the named substituents on the benzene rings, and that such substituents do not impart solubility in water to the dye. They urge also that according to the instant specification "no further substituent is necessary as in the case of the patent." (Italics supplied). The examiner, in commenting on that difference stated:
* * *"
We note that applicants' patent discloses both components of the dye, each of which may contain benzene rings without any substituents thereon. It seems to us that the patent disclosure would suggest to one skilled in the art reacting any of the diazo components in column I of the patent with any of the coupling components in column II, since the same basic coupling reaction is involved in each case. Appropriate selection of the diazo component and the coupling component therefrom should result in production of the dye claimed herein. In view of the fact that appellants have failed to explain why the presence or absence of substituents on the benzene ring is of any material significance, and have failed to offer any proof to substantiate their allegation that two different inventive concepts are involved, it appears to us, as it did to the examiner and the board, that there is but one patentable invention here to which both the patented and appealed claims are directed.
Appellants contend also that if the instant application and the patent had been filed by different inventors, no interference could be possible, since the claims and disclosures are mutually exclusive. Double patenting may exist even where, as here, the claims in two cases are not mutually cross-readable. In re Ockert; In re Ward et al., 236 F.2d 428, 43 CCPA 1007.
Appellants' reference in their brief to the terminal disclaimer provisions of 35 U.S.C. § 253 is noted. We do not find, however, that question to have been raised below, thus we cannot consider it here.
The decision is affirmed.
Affirmed.
I agree that the rejection of the claims should be affirmed and I agree that the reason for the rejection is "double patenting." But I cannot agree with the apparent underlying concept of the court's opinion that the reason for so holding is that there is "but one patentable invention" encompassed by the reference patent claims, as between which there is no "conceptual difference." I think this is contrary to the plain facts of the case. First, as to the facts:
Appellants filed two patent applications on the same day, Ser. No. 427,361 and Ser. No. 427,362.1 These two applications disclose two distinct inventions. For the sake of simplicity I will identify...
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