Johnson, In re
| Decision Date | 09 November 1984 |
| Docket Number | No. 84-952,84-952 |
| Citation | 223 USPQ 1260,747 F.2d 1456 |
| Parties | In re Wayne O. JOHNSON. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Terence P. Strobough, Philadelphia, Pa., argued for appellant.
Harris A. Pitlick, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C.
Before MARKEY, Chief Judge, DAVIS, Circuit Judge, and NICHOLS, Senior Circuit Judge.
This is an appeal from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the examiner's final rejection under 35 U.S.C. Sec. 103 of claims 15-22 of appellant's application serial No. 54,757, filed July 3, 1979, entitled "Herbicidal Esters of 4-Tri-fluoromethyl-3'-carboxy-4'-nitro diphenyl ethers." We affirm.
Appellant claims novel compounds showing herbicidal activity and methods of controlling weeds with the claimed compounds. The compounds claimed belong to a class of herbicides known as diphenyl ethers. Although certain diphenyl ethers have been shown useful as herbicides, the effectiveness of a particular diphenyl ether is difficult to forecast from the substituent groups bonded to the phenyl rings of the ether. Applicant discloses its compounds as effective both as preemergence and postemergence herbicides, as selectively effective, and as useful in conjunction with other selective herbicides.
The claims on appeal are:
15. A compound of the formula:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
wherein X is a hydrogen atom, a halogen atom, a trifluoromethyl group, a (C1 -C4 ) alkyl group, or a cyano group; Y is a hydrogen atom, a halogen atom, or a trifluoromethyl group; and Z is (C2 -C6 ) alkenyl, (C2 -C6 ) haloalkenyl, (C3 -C6 ) alkynyl, (C3 -C6 ) haloalkynyl, (C8 -C12 ) arylalkynyl substituted with a halo, methyl or nitro, (C4 -C7 ) cycloalkenyl or (C3 -C6 ) epoxyalkyl).
16. The compound of claim 15 wherein Y is hydrogen and X is halogen.
17. The compound of claim 16 wherein Z is (C2 -C6 ) alkenyl.
18. The compound of claim 16 wherein Z is allyl and X is chloro.
19. A herbicidal composition which comprises a compound according to claims 15, 16, 17 or 18 and an agronomically acceptable carrier.
20. The composition of claim 19 which additionally comprises a surfactant.
21. A method of controlling weeds which comprises applying to the surface of the growth medium prior to the emergency of the weeds from the growth medium the compound of claim 15 in an agronomically effective amount.
22. A method of controlling weeds which comprise applying to weed seedlings the compound of claim 15 in an agronomically effective amount.
The references relied upon by the examiner are:
Bayer et al ("Bayer-1") 3,928,416 Dec. 23, 1975
Bayer et al ("Bayer-2") 3,798,276 March 19, 1974
Theissen 3,907,866 Sept. 23, 1975
The Bayer-1 patent discloses herbicidal compounds of the formula:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
wherein Z is hydroxy, alkoxy, alkyl, halo, amino, alkylthio, cyano, carboxy, carbalkoxy, carboxyalkyl, carbalkoxyalkyl, alkanoyloxy, or carbamoyloxy.
The Bayer-2 patent, the parent of Bayer-1, discloses herbicides of the formula given above wherein Z is an alkoxy group, an alkyl group, alkoxyalkoxy, hydroxyalkoxy, halo, alkylamino, dialkylamino, alkylthio, carboxy, carbalkoxy, carboxyalkoxy, carbalkoxyalkoxy, carboxyalkyl, carbalkoxyalkyl, N,N-dialkylureido, alkanoylamide, or a carbalkoxyamino.
The Theissen patent discloses herbicides of the formula:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
wherein X is halogen, n is 1-3, and R is alkyl (C4 -C12 ), cycloalkyl (C3 -C11 ) or unsaturated hydrocarbyl (C3 -C10 ).
As can be seen, the claimed compounds and the prior art are structurally similar. Johnson differs from Theissen as it contains a CF3 (trifluoromethyl group) at the para position of the ether where a C1 (chloride) radical is found in Theissen. Johnson differs from Bayer-1 and -2 in that it discloses alkenyl esters (compounds having a -COOZ radical wherein Z is, among other things, a C 2-6 alkenyl) while Bayer discloses saturated alkyl esters (compounds having a -COOR radical where R is C1-14 alkyl). Bayer-1 specifically discloses a methyl ester.
The examiner originally rejected the claimed matter, in relevant part, as unpatentable over Bayer-1 under 35 U.S.C. Sec. 103, and unpatentable over Bayer-2 in view of Theissen and Bayer-1 under 35 U.S.C. Sec. 103. The examiner based these rejections on Bayer et al's showing of nitro diphenyl ethers with a carboalkoxyl substituent; Theissen's showing that "R" of the -COOR radical may be alkenyl; and the Bayer-1 teaching of the equivalence of CF3 to halogen substituents (C1 being a member of the halogens) on the ring of the diphenyl ether.
Appellant responded to the examiner's action and filed a Rule 132 affidavit by Dr. Yih, an employee of the true party in interest in this appeal, Rohm and Haas Company. The affidavit set forth a comparative showing of appellant's compound with a representative Theissen compound. Tests had been run which indicated that appellant's compound produced "highly significant and unexpected differences." Dr. Yih concluded from the tests that the Johnson compound is significantly and unexpectedly more active than the tested Theissen compound in general herbicidal activity.
Considering appellant's response and the Yih affidavit, the examiner issued a final rejection under 35 U.S.C. Sec. 103 over the teachings of the Bayer et al and Theissen patents, indicating that the claimed compounds were prima facie obvious. The examiner's reasoning regarding the showing of obviousness and the attempted rebuttal of that conclusion is as follows:
Theissen makes obvious the alkenyl esterification of the Bayer et al herbicides and conversely the Bayer et al patents make obvious the substitution in the Theissen compounds of the para halogen by a trifluoro group and the herbicidal activity of compounds so substituted expected.
The declaration, addressing itself to the latter, is not seen to overcome this rejection. The differences in activity are seen as but expected variations, the trifluoromethyl group generally imparting enhanced activity and the positioning of the same * * * pointed to [ ] by Bayer et al. Further the testing of Bayer et al * * * is seen to teach alkenyl esters of these trifluoro-methyl substituted herbicides, applicants arguments notwithstanding, albeit among numerous substituents. Thus as the point of novelty of the claimed compounds over the Bayer et al compounds appear to reside in the unsaturated ester moity, taught specifically by Theissen and disclosed by Bayer et al, a showing of unexpected activity of the claimed compounds over the Bayer et al alkyl ester counterparts is required to overcome this rejection. [Emphasis supplied.]
The examiner conceded in his answer to appellant's brief to the board that the 132 affidavit overcame that part of the 103 rejection holding that the Bayer et al patents made obvious the substitution in the Theissen compounds of the para halogen by a trifluoromethyl group. The examiner argued, however, that the paramount consideration supporting obviousness was that Theissen makes obvious the alkenyl esterification of the Bayer et al herbicides, and that a showing of unexpected activity over Bayer et al saturated esters was necessary. Applicant argued that no such showing was needed because an applicant relying upon a comparative showing to rebut prima facie obviousness must compare his claimed invention only with one of equally close prior art references, citing In re Merchant 75 F.2d 865, 197 USPQ 785 (CCPA 1978) and In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978).
On appeal and reconsideration, the board agreed with the examiner's conclusion of prima facie obviousness. Regarding the attempted rebuttal, the board noted that the question was not which compound was the closest prior art, but that the "references together singly teach a different substituent from appellant's at one position" of the basic diphenyl ether molecule. Thus the board held it incumbent upon appellant to...
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