In re Harnisch, Appeal No. 79-614.

• Decision Date: 12 June 1980
• Docket Number: Appeal No. 79-614.
• Citation: 631 F.2d 716
• Parties: In re Horst HARNISCH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

631 F.2d 716

In re Horst HARNISCH.

Appeal No. 79-614.

United States Court of Customs and Patent Appeals.

June 12, 1980.

Leonard Horn, New York City, attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents and Trademarks, Fred E. McKelvey, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and FORD, Judges.^*

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) rejecting, under 37 C.F.R. 1.196(b), claims 1 and 3-8¹ of appellant's application, serial No. 559,978, filed March 19, 1975, for "Coumarin Compounds," on the sole ground that these claims are "drawn to improper Markush groups." We reverse.

The Invention

The claimed compounds encompass coumarin compounds useful as dyestuffs. Some of them may be used as intermediates to make other dyestuffs. Claim 1 is representative and reads as follows:

1. Coumarin compounds which in one of their mesomeric limiting structures correspond to the general formula wherein

X represents aldehyde, azomethine, or hydrazone,

R1 represents hydrogen or alkyl,

Z1 represents hydrogen, alkyl, cycloalkyl, aralkyl, aryl or a 2-or 3-membered alkylene radical connected to the 6-position of the coumarin ring and

Z2 represents hydrogen, alkyl, cycloalkyl, aralkyl or a 2-or 3-membered alkylene radical connected to the 8-position of the coumarin ring

and wherein

Z1 and Z2 conjointly with the N atom by which they are bonded can represent the remaining members of an optionally benz-fused heterocyclic ring which, like the ring A and the alkyl, aralkyl, cycloalkyl and aryl radicals mentioned, can carry further radicals customary in dyestuff chemistry.

Claims 3-6 depend from claim 1, adding further limitations with respect to the substituents; claim 7 is an independent claim of the same type as claim 1 but of much greater length in naming substituents, and claim 8 depends therefrom as well as from claim 4.

The instant coumarins are said to be useful for dyeing synthetic or natural fibers, plastics, and liquids such as oils and lacquers. Of apparently significant commercial value is the dyeing of either the aqueous or organic based inks preferred in rotary gravure printers for non-textile articles.

Clear shades of yellows to oranges are purportedly achieved with good fastness properties. In addition, a strong chartreuse to yellow fluorescence supposedly occurs upon exposure to either natural or ultra-violet light. The fluorescence is said to be especially suitable for tunable dye lasers.

The Rejection

The examiner, relying on no prior art, rejected claims 1 and 3-8 under 35 U.S.C. § 121 "as containing an improper Markush group and misjoinder." More explicit reasons were said to be set forth in the earlier Office Action of May 12, 1976. In that action the examiner enumerated ten species of compounds encompassed by the claims. Beside each group he listed the various PTO class 260 subclasses into which the species fall.

The significance of this segmentation was declared to be twofold. In the examiner's words,

A reference anticipating one member of the listed groups would not render any other member obvious under 35 U.S.C. § 103. The members are not so few in number or so closely related that a search and examination of the entire claim cannot be made with sic, without? serious burden.

The Board

The board summarily reversed the rejection of the appealed claims under 35 U.S.C. § 121. Citing our decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978), and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), decided subsequent to the examiner's rejection, the board stated that "35 U.S.C. § 121 does not form the basis for rejection of a claim * * *."

A new rejection was then made by the board under 37 C.F.R. 1.196(b),² rejecting the claims as "drawn to improper Markush groups." After a lengthy listing of decisions from 1925 to 1953 reviewing "Markush practice," by the Commissioner, the board, and this court,³ the board expounded its theory of the propriety of its new "improper Markush group" rejection solely on the basis of "judicially created doctrine," as follows (our emphasis):

Applying the facts of this case to the principles enunciated, we find that the members of the Markush groups of the claims do not belong to a known or recognized genus and possess widely different physical or chemical properties. Aside from the obvious fact that the compounds encompassed by the claims are not functionally equivalent, said compounds, considered as a whole, are so dissimilar and unrelated chemically or physically that it would be repugnant to accepted principles of scientific classification to associate them together as a generic group. For example, the types of derivatives encompassed by the Markush claim may include polyfused N-heterocyclics, cyclic, acyclic and aromatic amines, aryloxyalkylamines, amides, sulfonamides, phthalimides, quaternary ammonium salts, phosphorous heterocyclics, phosphates, aldehydes, azomethines, hydrazones, ethers, esters, halogens, alcohols, nitriles, piperidines, furanes, pyrroles, indoles, amongst others. It is clear that on this record the involved compounds cannot be considered functionally equivalent, in fact, some being no more than intermediates for the others. The foregoing is borne out by the record wherein appellant discloses that the various groups or compounds possess different physical or chemical properties. Nowhere in the record has it been established or even alleged that the variety of compounds included within the explicit scope of the claims are recognized by the art as being functionally equivalent. The functional groups involved herein, as exemplified above, are so structurally diverse they would be expected to possess dissimilar and unrelated chemical and physical properties. The mere fact that there is a single structural similarity (i. e., the coumarin group) is not in itself sufficient reason to render all the embodiments functionally equivalent, particularly when the ultimate properties of the final products would not be expected to possess any recognized functional relationship. Thus, the fact that the coumarins are in most part indicated as being dyestuffs (others being intermediates for dyes) is not sufficient, since, depending upon their structure, they may be subject to different modes of application and use.

Appellant's Position

Appellant, picking up the board's statement that its rejection "has basis in judicially created doctrine," as shown by the cases it cited, rather than in the patent statutes, asks this court, first, whether claims can be rejected on a judicially-created doctrine rather than on some statutory basis, such as 35 U.S.C. § 121 on which the examiner relied. If they can, then appellant asks, second, whether the compounds claimed are sufficiently closely related to be joined in the same claim.

On the first point, appellant seems to assume some unstated specific "doctrine" on which the board acted, against which he inveighs, and which he says cannot stand, urging us not to create a "doctrine."

On the second point, appellant discusses the fact situation underlying the appealed claims, showing that the compounds are all dyestuffs, that the members of group X, claim 1, are closely related, that the compounds are all coumarins, and cites two board opinions reversing rejections by the examiner of claims structured similarly to appellant's claims, namely, Ex parte Brouard, 201 USPQ 538 (Bd.App.1976), and Ex parte Taylor, 167 USPQ 637 (Bd.App. 1969). The former case, like this one, involved a claim 24 to a dyestuff defined by structure containing, inter alia, a substituent "B" the definition of which included a list of alternatives occupying about a column in the USPQ report. The rejection reversed was on the ground of "improper Markush group" and misjoinder of independent and distinct inventions.

The PTO Position

The solicitor's brief contains helpful digests of certain key cases selected from the many which discuss "Markush practice" from its inception in 1924 through 1979. It supports the board's new rejection on the ground the claims are drawn to "improper Markush groups." After stating that "Markush practice" is one of long standing and involves a vast body of precedent, the brief relies primarily on the following contentions: (1) there need not be a specific statutory basis for the rejection, citing by analogy obviousness-type double patenting rejections which are case-law based; (2) the materials set forth in the "Markush group" ordinarily must belong to a recognized physical or chemical class or to an art-recognized class; and (3) the claimed group must not be "repugnant to accepted principles of scientific classification."

A principal factual contention in the solicitor's brief is that appellant's claimed compounds include (1) dyestuffs, (2) intermediates for making dyestuffs, or (3) both, and fails to reveal the utility per se of each compound. However, at oral argument the solicitor announced with admirable candor that, having considered appellant's reply brief, he had concluded that there is in fact no class "(2)" because all of the claimed compounds are dyestuffs though some of them could also be used as intermediates to make still other dyestuffs.

The solicitor also cited authority to the effect that each "improper Markush" case must be decided on the basis of its own facts. He also stated that current PTO "Markush practice" is as set forth in section 706.03(y) of the Manual of Patent Examining Procedure (MPEP), 3d ed., Rev. 46, July 1976, reproduced in full as an appendix hereto.

OPINION

We will first express our views concerning the PTO's reliance on "judicially created doctrine" in its rejection of claims for "improper Markush grouping." Appellant injected this point into the case by contending that the PTO had no right to rely on...