In re Cavallito

• Decision Date: 25 July 1962
• Docket Number: Patent Appeal No. 6822.
• Citation: 306 F.2d 505,49 CCPA 1335
• Parties: Application of Chester John CAVALLITO and Allan Poe Gray.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

49 CCPA 1335, 306 F.2d 505 (1962)

Application of Chester John CAVALLITO and Allan Poe Gray.

Patent Appeal No. 6822.

United States Court of Customs and Patent Appeals.

July 25, 1962.

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

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

Before WORLEY, Chief Judge, and RICH and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

We are here concerned with the rejection of claims 1, 12-15, inclusive, and 35 of appellants' application Serial No. 593,058, filed June 22, 1956, entitled "Organic Compounds". Claims 2, 3, 4, 7, 9 and 11 have been allowed.

Typical of the claims on appeal are claim 1, directed to a composition of matter, and claim 12, directed to a process for preparing the composition of matter. These claims are as follows:

"1. Polycarbon lower alkanes substituted on different carbon atoms by: (a) one onium-N-attached quaternary ammonium moiety having a radical weight, excluding the anion, not in excess of about 117 in which the onium-N substituents are three lower-aliphatic groups of which two can be joined to form a ring which can contain a hetero linking atom, and, (b) a second onium-N-attached quaternary ammonium moiety having a radical weight, excluding the anion, of at least 150 in which the onium-N is a member of a substituted -C5N ring whereof not more than one ring atom forms part of another ring system and wherein not more than one of the 2- and 6- positions of the C5N ring is substituted when the C5N ring is a substituted pyridine ring; and, wherein the electrostatic charges of the quaternary ammonium moieties are satisfied by the presence of two anions." Emphasis added.

"12. The process of preparing unsymmetrical bisquaternary ammonium salts which includes: quaternizing a substituted -C5N ring compound having a molecular weight of at least 150 with an omega-haloalkyl ammonium salt, said salt containing one onium-N-attached quaternary ammonium moiety having a radical weight, excluding the anion, not exceeding about 117 in which the onium-N substitutents are three lower-aliphatic groups of which two can be joined to form a ring which can obtain a hetero linking atom." Emphasis added.

Claim 35 differs from claim 1 in two respects. (1) There is an upper limit of 350 given to the radical weight of the larger moiety, and (2) a limitation on the substituents is stated in the final clause of the claim which appellants assert make "clear that the substitutents are non-ionic".

Claims 12-15 are process claims directed to making the compounds claimed in claims 1 and 35.

The board affirmed the rejection of all the appealed claims on the basis of the following prior art:

                  Erickson   2,617,806   Nov. 11, 1952
                

Moreno, Chem.Abstracts, Vol. 49, col. 15070-(1955); Clemo et al., J. Chem.Soc., Vol. of 1954, pp. 2582-2584; Bergstrom et al., Chem. Abstracts, Vol. 40, col. 870-871 (1946)

Our analysis of the rejections narrows the issues to be here considered to two: (1) that arising from the rejection of claims 1 and 35 as broader than the disclosed invention because of the inclusion therein of the term "lower-aliphatic groups" and (2) that arising from the rejection of claims 12-15, inclusive, as "unpatentable" over the cited art.

Although claims 1 and 35 were rejected on several grounds,¹ our decision as to the issues on appeal raised by the rejection of these claims as "broader than the disclosure" and as "based on an inadequate disclosure", is dispositive of them.

As stated by the board:

"The issue raised by this rejection is not easy to resolve because it is necessary to make a side-by-side comparison of the nature and scope of the disclosure with the nature and scope of the claims. The general legal principles are well understood, but their application to the facts of a particular case requires the exercise of a sharp sense of discrimination and a fine degree of judgment."

On the first issue, we agree with the board that the term "lower-aliphatic groups", contained in claims 1 and 35, gives these two claims a breadth greater than that warranted by the written description of the invention as found in the specification. We think, therefore, as to these claims that the present case is governed by our previous decision in In re Cavallito and Gray, 282 F.2d 357, 48 C.C.P.A. 711, rather than by our decision in In re Cavallito and Gray, 282 F.2d 363, 48 C.C.P.A. 720, as appellants have contended.

The pertinent portions of 35 U.S.C. § 112² which are directly involved in the rejection of claims 1 and 35 are the same as those considered in our opinion in In re Sus and Schaeffer, 49 CCPA ____, 306 F.2d 494.

We think the legal principles governing the sufficiency of the disclosure to support broad claims are correctly summarized by our statement in In re Cavallito and Gray, supra, that:

"* * * 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."

Since the problem here is in applying these principles to the particular facts of the present appeal, we shall pass directly to a determination of what is contained in the "written description of the invention" in appellants' specification and then to a determination of whether this written description is of adequate scope to support rejected claims 1 and 35.

The organic compounds disclosed in the specification are unsymmetric bisquaternary ammonium salts. The specification emphasizes the molecular structure of the compounds and states that "the invention resides in the concept of a composition of matter" having a particular molecular structure which is illustrated diagrammatically in the specification as follows:

Following this diagrammatic illustration, the specification states:

"The smaller moiety of the molecular structure has a radical weight not exceeding 117 and is made up of a quaternary nitrogen atom bearing substitutents (R1, R2, R3) such as three lower-alkyl or lower-alkenyl groups, which are the same or different; or, the moiety is an N-heterocyclic radical, which heterocyclic radical may also include an oxygen or sulfur atom, having a lower-alkyl or lower-alkenyl radical also attached to the heterocyclic N atom. The sum of the carbon atoms in the substitutents attached to the quaternary N in the smaller moiety should not be greater than about 7, and preferably, at least one of said substituents is the methyl radical."

The specification also states:

"The physical embodiments of this concept are solids having relatively high melting points and exhibit applied use characteristics in that they possess very unusual hypotensive activity of varying duration, and, ganglionic blocking properties, which two characteristics vary independently with relation to changes in molecular structure in any series of the various members or compounds of the composition."

The specification contains some 90 examples which appellants in their brief characterize as "fairly representative of the field covered by the claims." It also contains detailed exemplary material which, appellants assert in their brief, teach "the various types of components which are included and how to make them."

The specification describes the critical limits of the invention in the rejected claims as follows:

"The smaller moiety of the molecule consists of a cationic quaternary ammonium group and it is critical that the atoms of such moiety not exceed a total weight of about 117. The preferred substituents attached to the N atom of this moiety are three lower-alkyl radicals from the group: methyl, ethyl, n-propyl, and isopropyl. Two of these radicals may be joined to form with the said N-atom a small heterocyclic radical, such as pyrrolidino, methyl-pyrrolidino and piperidino, and the heterocycle may include an oxygen or sulphur atom, as in the morpholino and thiamorpholino radicals.

"The larger moiety of the molecule also is a cationic quaternary ammonium group which has a radical weight of at least 150, preferably in the range between about 175 and 350, and should contain a minimum of polar substitutent radicals other than that of the aforementioned onium group. Fundamentally, the larger grouping involves a pyridine ring, and the pyridine ring can be substituted by a wide variety of radicals and may be partially or completely hydrogenated to eliminate unsaturation from the ring.

"The lower-alkylene bridge between the two quaternary ammonium moieties has at least two and preferably not more than about six carbon atoms therein and can be straight or branched chain. The optimum pharmacological activity appears to reside in physical embodiments of the concept wherein the bridge has three carbon atoms."

At the oral argument, counsel for appellants emphasized the particular molecular structure of compounds embodying the claimed invention and related this structure to the characteristics of the compounds which, as stated in the specification, have the "unusual hypotensive activity of varying duration, and, ganglionic blocking properties." There appears to be...