Commissioner of Patents v. DEUTSCHE GOLD-UND-SILBER-S., ETC.

• Decision Date: 08 May 1968
• Docket Number: No. 20182.,20182.
• Citation: 397 F.2d 656
• Parties: COMMISSIONER OF PATENTS, Appellant, v. DEUTSCHE GOLD-UND-SILBER-SCHEIDEANSTALT VORMALS ROESSLER, Appellee.
• Court: U.S. Court of Appeals — District of Columbia Circuit

397 F.2d 656 (1968)

COMMISSIONER OF PATENTS, Appellant, v. DEUTSCHE GOLD-UND-SILBER-SCHEIDEANSTALT VORMALS ROESSLER, Appellee.

No. 20182.

United States Court of Appeals District of Columbia Circuit.

Argued February 3, 1967.

Decided May 8, 1968.

COPYRIGHT MATERIAL OMITTED

Messrs. Joseph Schimmel, Solicitor, and Raymond E. Martin, Atty., United States Patent Office, for appellant.

Mr. Jennings Bailey, Jr., Washington, D. C., with whom Mr. Hugo Huettig, Jr., Washington, D. C., was on the brief, for appellee.

Messrs. Charles E. Feeny, Philadelphia, Pa., Donald R. Dunner and Herbert I. Sherman, Washington, D. C., filed a brief on behalf of The American Patent Law Association, as amicus curiae. Messrs. Ellsworth H. Mosher, Washington, D. C., also entered an appearance for amicus curiae.

Before BAZELON, Chief Judge, BURGER and ROBINSON, Circuit Judges.

BURGER, Circuit Judge:

The Commissioner of Patents appeals from an order of the District Court directing him to issue a patent to Appellee on two claims of a patent application.¹ Appellee, a West German corporation, is the assignee of the application, entitled "Thiophenylpyridyl Amine, Chlorothiophenylpyridyl Amine, Their Salts and Preparation." Claim 1 is generic, consisting of an ammonia-derivative compound selected from a group of compounds described by a general formula. Claim 2, a specific ammonia-derivative of Claim 1, is a specie identified in the chemical nomenclature as 1-azaphenothiazine.

Admitting that the Patent Office is taking a new and "revoluntionary approach,"² the Commissioner raises four issues here: (1) whether under 35 U.S. C. § 103 (1964) structural obviousness alone is an absolute bar to the grant of a patent; (2) whether "advance in the art" is a fourth condition of patentability required by section 103 and Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); (3) whether evidence of comparative tests between the claimed compound and its isomers was insufficient to satisfy the burden of proof; and (4) whether the District Court erred in basing its decision on secondary evidence and not following the "best evidence" rule.

The factual background can be stated briefly. Appellee's application consisted of six claims including generic, specific, and process claims. The Examiner rejected five of the claims in light of four prior art references, and the last claim was cancelled. The Examiner also found that a "rule 132" affidavit,³ submitted to traverse the prior art references, was insufficient. The Board of Appeals reversed as to the process claims, which still stand,⁴ but affirmed the Examiner as to the generic and specific claims, the same claims in issue on this appeal, finding them unpatentable for failure to meet the non-obviousness requirement of section 103. The Board further agreed with the Examiner that the affidavit was ineffective to overcome the finding of obviousness, because no showing was made as to the pharmacological properties of the claimed compounds themselves in the affidavit.⁵

Apparently finding structural obviousness, the District Court determined that the existence of novel beneficial properties in the claimed compounds served to overcome the finding of obviousness due to structural similarities. In order to meet the prior art references, Appellee introduced evidence showing novel vermicidal properties of the claimed compounds not disclosed or suggested in the prior art. Evidence was also introduced showing the enhanced effectiveness of the compounds as intermediates in the preparation of patented sedatives and antihistamines.

(1)

Structural Obviousness

The third statutory criteria for the grant of a patent, "nonobviousness,"⁶ is found in section 103. "A codification of judicial precedents embracing the Hotchkiss⁷ condition" of invention, Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693 (1966), section 103 precludes the grant of a patent

if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

In the Graham case the Supreme Court, for the first time, devoted itself to an extensive discussion of the concept of "non-obviousness" as codified in section 103. Some further clarification seems in order in what appears to be a blurred area of patent law.

The Commissioner asserts that under the standard of non-obviousness, structural obviousness of the claimed compound from the prior art reference is an absolute bar to a patent. While conceding that the language of section 103, "subject matter as a whole," refers not only to the chemical structure or formula, but can include properties of the structure or compound and the results it can accomplish, the Commissioner constructs the following argument:

It should be quite clear that the antecedent of "subject matter as a whole" in Section 103 of 35 U.S.C. is "subject matter sought to be patented", which expression means obviously the claimed subject matter, as distinguished from subject matter which is merely disclosed in applicant\'s specifications but not included in the claims.

Commissioner's Reply Brief, p. 2 (emphasis in original). But cf. General Tire & Rubber Co. v. Brenner, 127 U.S.App.D.C. 102, 381 F.2d 270 (1967).

Initially we have some doubt as to the question of structural obviousness. The Examiner found that the concept of the claimed compound was either clearly taught or obvious⁸ from the prior art which disclosed the corresponding oxygen analog of the claimed compound;⁹ that the concept of varying the ring nitrogen position and ring isomers to create the claimed compound were taught by name and structure;¹⁰ and that the methods of preparation were clearly suggested by the prior art. The Board of Appeals agreed. Apparently this was also the finding of the District Court, although the opinion is not entirely clear on this score.¹¹ Since a Patent Office determination of non-obviousness is entitled to great weight, and District Court findings to the same effect will not be set aside unless clearly erroneous,¹² we are satisfied as to the structural obviousness of the claimed compound and the prior art references; indeed, the parties do not seem to challenge this. We note, however, that this is not a case where a new property was discovered in an old compound nor one involving a simplistic change in a chemical formula. Appellee's evidence discloses that substantial time and effort were devoted to experimentation in order to develop a new compound with novel and unobvious properties and utility.

The issue raised by the Commissioner is the extent to which this structural obviousness operates in the determination of the non-obviousness of the subject matter as a whole under section 103. Structural obviousness generally arises because the claimed compound is — in the chemists' jargon — a homolog, analog, or isomer of the prior art references.¹³ In fact, the enormous number of known organic compounds gives rise to a situation in which absolutely unique and unknown groupings of atoms in a completely new chemical compound is a rare occurrence. In light of this datum, this Court and the Court of Customs and Patent Appeals for some years now have been of the view that patentability is not determined on the basis of structural obviousness alone. Obvious molecular modification coupled with a showing of novel properties¹⁴ or superiority of known properties¹⁵ can establish patentability.

Perhaps the best expression of the view that obvious but novel compounds should be considered in conjunction with their properties is Judge Rich's excellent opinion in Application of Papesch, 315 F.2d 381, 50 CCPA 1084 (1963). After discussing the various authorities and concluding that the statute required a determination of obviousness and patentability after consideration both of the chemical structure and the pharmaceutical and biological properties of the claimed compound, Judge Rich stated:

From the standpoint of patent law, a compound and all its properties are inseparable; they are one and the same thing. The graphic formulae, the chemical nomenclature, the systems of classification and study such as the concepts of homology, isomerism, etc., are mere symbols by which compounds can be identified, classified, and compared. But a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is patented is not the formula but the compound identified by it. And the patentability of the thing does not depend on the similarity of its formula to that of another compound but of the similarity of the former compound to the latter. There is no basis in law for ignoring any property in making such a comparison. An assumed similarity based on a comparison of formulae must give way to evidence that the assumption is erroneous.

Id. at 391. The sound reasoning of the Papesch case has been unanimously and repeatedly reaffirmed by the Court of Customs and Patent Appeals.¹⁶ Doubtless we must agree with admonitions against deciding questions of chemical obviousness on the basis of structure alone. In response to the arguments of the Commissioner and those who assert that if a compound is structurally obvious, a showing of novel properties should not make it any less obvious,¹⁷ several points should be noted.

First, it would appear that the Commissioner's position is hardly supported, but on the contrary is substantially undermined, by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684 (1966), although he seems to place great reliance on this case. Graham was the first authoritative opinion dealing with the question of obviousness under section 103. It is clear from that unanimous decision that hard and fast rules of general applicability are...