In re Zeidler

• Decision Date: 24 June 1982
• Docket Number: Appeal No. 81-555.
• Citation: 682 F.2d 961
• Parties: In re Georg ZEIDLER, Guenter Hansen and Wolfgang Schulte.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

682 F.2d 961

In re Georg ZEIDLER, Guenter Hansen and Wolfgang Schulte.

Appeal No. 81-555.

United States Court of Customs and Patent Appeals.

June 24, 1982.

Herbert B. Keil, Washington, D. C., for appellants.

Joseph F. Nakamura, Sol., and Harris A. Pitlick, Asst. Sol., Washington, D. C., for the Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the examiner's rejection of claims 8 and 9 in application serial No. 413,664, filed November 7, 1973, for "Trisazo Dyes," under 35 U.S.C. § 103. We affirm the rejection of claim 9 but reverse the rejection of claim 8.

The Invention

Appellants claim two trisazo dyes. The rejected claims are:

8. The dye of the formula

9. The dye of the formula

The significant difference from the compounds of the references, according to appellants, is the presence of a sulfonamido bridging group (-SO2NH) between the phenyl groups of the benzidine component of the dye.

The References

French patent 1,109,435 to Geigy discloses trisazo dyes in which the phenyl rings of the tetrazo component are either directly linked or are joined by any one of the groups -S-, -O-, -CH2-, -S-S-, -CH = CH-, -NH-, -NH-CO-, -NH-SO2-, -NH-CO-NH-, -SO-SO2- sic, -SO-, -SO2- and -CO-. Badische, French patent 1,242,226, discloses green trisazo dyes of the formula (which we have transposed right to left) wherein A is either phenol or 1,3-dihydroxybenzene. Where A is the latter, the dye molecule is identical to appellants' claim 9 dye except that the tetrazo component contains a -S- link rather than a -SO2NH- link.

German patent 2,110,771 to Huhne et al. (Huhne) discloses trisazo dyes of the formula

where A can be selected from groups including appellants' nitrophenyl radical, and B can be selected from groups including hydroxphenyl (as in the Badische patent) and the diaminophenyl radical of appellants' claim 8 dye. The Huhne example 1 dye has the formula

The Huhne example 2 dye, which differs from appellants' claim 8 dye only in that it has a -CONH- linking group rather than an -SO2NH- link, has the formula

Huhne states that his dyes are

* * * outstandingly suitable for dyeing natural or synthetic fibre materials containing hydroxyl groups or containing nitrogen, for example cellulose fibres in all states of processing, especially cotton and regenerated cellulose, and also wool, wool/cellulose union, silk, nylon, leather and paper. Green to black dyeings have good fastness properties, especially good fastness to water and to perspiration following an after-treatment with cationic auxiliaries, are obtained.

The Rejections

Claim 8 was rejected on Huhne in view of Geigy and claim 9 was rejected on Badische in view of Geigy, both under 35 U.S.C. § 103.

The Declarations

Dr. Dietrich Lach (Lach), a staff dye chemist for the assignee of appellants' application, BASF Aktiengesellschaft, made a declaration in response to the above rejections. Stating that Huhne "is considered to represent the closest prior art," Lach compared the Huhne example 2 dye with appellants' claim 8 dye (labeling them dyes 1 and 2 respectively), and the Huhne example 1 dye with appellants' claim 9 dye (labeling them dyes 3 and 4, respectively). Each dye was tested for water-solubility, dyeing of chrome side leather and retanned chrome side leather, and washfastness. The visual results of Lach's tests are included in an exhibit accompanying the declaration, and a table in the declaration indicates that appellants' dyes both had a solubility of 40 grams per liter (g/1), while the Huhne dyes had solubilities of 18 and 10 g/1.

Lach stated:

It is obvious from these Exhibits that Dyes 2 and 4 appellants' dyes have surprising advantages in the dyeing of retanned chrome leather and in the washfastness.

The new dyes have further a much better solubility than the prior art Dyes 1 and 3.

As to the importance of these properties, I would like to remark that nowadays mostly retanned chrome leather is in demand, because of its better properties, and that the dyes therefor must be effective for this material.

Washfastness is very important for glove and garment leather and is a requirement for these uses. Finally the solubility is extremely important in the dyeing process and 20 g/1 is considered to be the lowest value acceptable for practical purposes.

In response to the examiner's statement that the differences in the dyes noted in the first declaration "are not great enough to tip the balance in favor of patentability," Lach made a supplemental declaration. In it he stated:

It is generally known in the trade that the dyeing of chrome leather in full shades normally does not pose any great problems because the anionic leather dyes have a good affinity for this substrate. However, when the leather has been pretreated with synthetic or vegetable tanning agents, as is the case with retanned chrome leather, the affinity for most dyes is decreased considerably. It is therefore a big and, in many cases, unsolved problem to dye retanned chrome leather in deep shades. It is therefore very surprising and unobvious that Dyes 2 and 4 do dye retanned chrome leather in sufficiently deep shades with the same amount of dye as is used for non-retanned chrome leather. This behavior is quite in contrast to that of Dyes 1 and 3 which show the normal behavior, i.e. they more or less only stain the retanned chrome leather.

It is also known that dyes having low water-solubility are in general more suitable for the dyeing of retanned chrome leather than dyes with good solubility. It is therefore all the more surprising that the much more readily soluble Dyes 2 and 4 give the deeper dyeings.

Finally, the differences in the washfastness between the new and the known dyes are extreme; in fact, the differences are as big as that between usefulness and uselessness. Here again, this behavior is unexpected in view of the solubilities.

Taking things overall, the new Dyes 2 and 4 show an unforeseeable combination of advantageous properties which are very different from those of Dyes 1 and 3 and are very surprising and unobvious, particularly if one concedes a structural similarity.

The Board

With respect to claim 8, the board stated that the sole difference between the claimed dye and the example 2 dye of Huhne is the presence of a sulfonamido (-SO2NH-) instead of a carbonamido (-CONH-) linking group. Since Geigy teaches the interchangeability of those groups, the board concluded that the claim 8 dye was prima facie obvious. Turning to the declarations of Lach, they stated:

While the minor differences in results demonstrated in the Declarations are not expressly spelled out in the references, it would be somewhat unexpected not to experience some differences in degree at least when a structural change is made to a basic molecular configuration. We therefore think it appropriate to insist upon a more dramatic difference in results where, as here, the showings are limited as to the number of properties tested.

The board also sustained the rejection of claim 9. Because Lach compared the claim 9 dye with the Huhne example 1 dye, the board stated that his "Declaration is of little probative value * * * since it does not provide a comparison of the claimed compound with the closest prior art compound disclosed in Badische."

Arguments On Appeal

Appellants state that the CCPA has often held that an affidavit of a skilled worker in the field must be given its fair weight and that neither the examiner nor the board should substitute their own speculations for the factual knowledge of those skilled in the art. "The fact that the dyes of claims 8 and 9 impart full and deep shades to retanned chrome leather with the same amount of dyestuff as is used for non-retanned chrome leather was surprising to Dr. Lach. This property of Appellants' dyes was in sharp contrast to the prior art dyes which only stained retanned...