In re King, Patent Appeal No. 4184.

• Decision Date: 04 December 1939
• Docket Number: Patent Appeal No. 4184.
• Parties: In re KING et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

107 F.2d 618 (1939)

In re KING et al.

Patent Appeal No. 4184.

Court of Customs and Patent Appeals.

December 4, 1939.

Whittemore, Hulbert & Belknap, of Detroit, Mich. (Clarence B. Zewadski, and L. Gaylord Hulbert, both of Detroit, Mich., and George A. Degnan, of Washington, D. C., of counsel), for appellant.

Howard S. Miller, of Washington, D. C., for Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

JACKSON, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the examiner rejecting claims 3, 5, 10 and 13 to 23 inclusive of an application for a patent for alleged new and useful improvements in "Composition of Matter and Process of Preparing the Same."

Both process and product claims are involved and they relate to a therapeutic agent having anti-scorbutic activity and to a method of producing and administering the same. Two method claims describing the isolating of vitamin C from lemon juice were allowed.

Claims 3, 5 and 10 are illustrative of the subject matter and read as follows:

"3. As a therapeutic product useful for its vitamin C potency, the substance hexuronic acid C, a white crystalline solid melting at 190 to 192°C. and having a vitamin C potency such that .5 to .75 mg. per day protects from scurvy guinea pigs maintained on a scorbutic diet."

"5. A product comprising an edible food having incorporated therein hexuronic acid C, a white crystalline substance melting at 190 to 192°C."

"10. The method of making food products having high concentration of vitamin C comprising incorporating in food products hexuronic acid C."

The reference relied upon is: Szent-Cyorgyi; Observations on the function of peroxidase systems and the chemistry of the adrenal cortex. Description of a new carbohydrate derivative — Biochemical Journal — 1928 — Pages 1387 — 1409.

Additional art cited was: King, G. C. — Vitamin C. Ascorbic Acid. Physiological Reviews, April 1936, Pages 238-262; Sherman and Smith; The Vitamins — Second Edition — 1931 — Pages 13, 14, 148-220; Zilva; The Antiscorbutic Fraction of Lemon Juice — Biochemical Journal — Volume 18 — 1924 — Pages 632-637; Grettie and King; Journal of Biological Chemistry — Volume 84-1929 — Pages 771-6; Sipple and King — Journal of the American Chemical Society — Volume 52 — 1930 — Pages 420 to 423.

For hundreds of years it has been known that lemon juice had therapeutic properties and usefulness in the prevention and treatment of scurvy. Lemon juice was known for that reason as an anti-scorbutic. The component contained in the lemon juice having the said therapeutic property has been called vitamin C for many years. It had never been recognized as such until, after much research, appellants did so recognize it. After appellants had isolated the substance, they determined its exact chemical and physical properties including melting point and empirical and structural formulas. Now the said vitamin may be made synthetically from certain sugars.

Appellants called the vitamin "hexuronic acid C." It is now known as vitamin C, hexuronic acid or hexuronic acid C, ascorbic acid and cevitamic acid, the formula being C6H8O6.

After appellants had found that hexuronic acid was vitamin C it was then discovered that Szent-Gyorgyi had previously reported that a compound he had isolated from the adrenal glands of animals had for its empirical formula C6H8O6, and it was designated by Szent-Gyorgyi as hexuronic acid. Following Szent-Gyorgyi's isolation of hexuronic acid from adrenal glands, he found that he could obtain an identical compound from orange juice or cabbage. Szent-Gyorgyi did not recognize his product as vitamin C and referred to it as a "reducing factor" (a substance or substances which can remove oxygen from or add hydrogen to other substances, or produce equivalent chemical changes). Appellants knew that hexuronic acid was vitamin C and, therefore, realized that when it was added to foods lacking the vitamin it gave the food antiscorbutic properties.

The examiner held as the two main grounds for rejecting the appealed product claims that there was no invention in separating a product from its impurities and that it is not invention to discover a new property of a substance which is old in the art.

The Board of Appeals in its general affirmance of the decision of the examiner held that the appealed claims are unpatentable over the Szent-Gyorgyi reference and did not deem it necessary to discuss the other grounds of rejection in detail.

The brief of appellants states that the only question involved here is one of law. We agree with appellant. They put the question as follows:

"Are the appellants, King and Waugh, who first isolated from lemon juice crystals of a pure chemical compound, and who first taught the public that these crystals had the antiscorbutic activity of vitamin C, entitled to a patent for this discovery in view of the fact that these crystals...