In re Stoll, Patent Appeal No. 5294.

• Decision Date: 22 April 1947
• Docket Number: Patent Appeal No. 5294.
• Parties: In re STOLL et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

161 F.2d 241 (1947)

In re STOLL et al.

Patent Appeal No. 5294.

Court of Customs and Patent Appeals.

April 22, 1947.

E. F. Wenderoth, of Washington, D. C. (A. Ponack, of Washington, D. C., of counsel), for appellants.

W. W. Cochran, of Washington, D. C. (Clarence W. Moore, of Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

O'CONNELL, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the action of the Primary Examiner in rejecting claims 9, 10, 11, and 12 in appellants' application for a patent for certain alleged "new and useful improvements in Sympatheticolytically Active Dihydro-Derivatives of Lysergic Acid Amides and their Manufacture." No claims were allowed.

Claims 9 and 10 were rejected as unpatentable over the prior art of record and claims 11 and 12 were rejected as being drawn to nonelected species and, therefore, need not be considered here on their merits.

The references are: Wolf 2,073,954 March 16, 1937; Kharasch 2,086,559 July 13, 1937.

Claim 9, which is generic, is illustrative and reads as follows: "9. The new chrystalline dihydro-derivatives of sympatheticolytically active lysergic acid amides selected from the group consisting of ergotamine, ergotoxine, ergocristine, ergosine, ergotaminine, ergotinine, sensibamine, lysergic acid butanolamide, lysergic acid propandiolamide, lysergic acid p-hydroxy-phenylethylamide, lysergic acid norephredide, lysergic acid amide of asymmetric diethylethylenediamine, lysergic acid diethylamide and lysergic acid anilide, which contain two hydrogen atoms more than the starting products, which give the Keller's and the Van Urk's color reaction, but the fluorescence in ultra-violet light of which has been decreased, which are less sensitive to light and to the air action than the starting products and which are no more transposable into the isomer series and which are without action on the uterus, but possess a pronounced action on the sympathicus, and the water-soluble salts of such derivatives."

Claim 10, drawn to the elected species, is specific to crystalline dihydro-ergotamine.

The ground upon which appellants rely to establish patentability of the rejected claims is summarized by counsel for appellants as follows: "Briefly stated, the invention is concerned with new derivatives of ergot alkaloids resulting from the addition onto the molecule of the latter of two hydrogen atoms. This addition of hydrogen is realized by a catalytic hydrogenation of the parent material under superatmospheric pressure and in a suitable solvent medium. The new dihydro derivatives have desirable and, as compared with the known alkaloids, distinct pharmacological properties * * *."

The record discloses that in the prosecution of the application before the examiner, appellants relied not only upon the claims here involved drawn to the derivatives of ergot alkaloids, but also upon a group of claims drawn to a process for producing them. The examiner rejected both groups of claims as lacking invention over the cited references. On appeal to the board, appellants submitted an affidavit to prove that the disclosure of the patent to Kharasch is inoperative for hydrogenating ergotamine and ergotoxine. Before the appeal was heard, however, appellants withdrew the appeal with respect to all the claims drawn to process.

The patent to Wolf relates to a process for the production "of a new alkeloid from ergot" and discloses that of the group of solutions specified as suitable for use as a solvent medium, the alkaloid is soluble in dioxane from which the alkaloid crystallizes unchanged. In other words, the patentee excludes the use of solvents to which the alkaloid is sensitive, and specifies the selection of one that is inert to the alkaloid.

The patent to Kharasch relates to hydrogenated ergotocin and the process for producing it. Claim 1 of the patent is specific to hydrogenated ergotocin and claim 2 to dihydroergotocin. The patentee stated in his application that he had also hydrogenated ergotoxine and ergotamine by his process but did not in that application claim those particular compounds.

The ergotocin of the patentee is dissolved in a suitable solution inert toward ergtocin and toward the catalyst used. The resulting solution is...