Jones, In re
| Citation | 958 F.2d 347,21 USPQ2d 1941 |
| Decision Date | 28 February 1992 |
| Docket Number | No. 91-1380,91-1380 |
| Parties | , 21 U.S.P.Q.2d 1941 In re Rita S. JONES, Michael T. Chirchirillo and Johnny L. Burns. |
| Court | U.S. Court of Appeals — Federal Circuit |
Melvyn M. Kassenoff, Sandoz Corp. Patent & Trademark Dept., East Hanover, N.J., argued for appellant; Gerald D. Sharkin and Richard E. Vila, East Hanover, N.J. and Joanne M. Giesser, Palo Alto, Cal., on brief.
Harris A. Pitlock, Associate Sol., Arlington, Va., argued for appellee; Fred E. McKelvey, Sol., on brief (Richard E. Schafer, Patent & Trademark Office, of counsel).
Before RICH, ARCHER, and CLEVENGER, Circuit Judges.
Rita S. Jones et al. (collectively Jones) appeal from the April 15, 1991 decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), Appeal No. 90-1920, sustaining the rejection of claim 1, the only claim of application Ser. No. 07/099,279, titled "The 2-(2'-Aminoethoxy)-Ethanol Salt of Dicamba," as unpatentable under 35 U.S.C. § 103. We conclude that the PTO has not presented a prima facie case of obviousness, and therefore reverse.
The claimed invention is a novel salt of 2-methoxy-3,6-dichlorobenzoic acid, which acid is commonly referred to as "dicamba." A known herbicide, dicamba has typically been sold in the form of its known dimethylamine salt.
The sole claim of the application on appeal reads:
1. The 2-(2'-aminoethoxy) ethanol salt of dicamba. The claimed salt has the following structure:
Richter, which all agree is the closest prior art, discloses dicamba in free acid, ester, and salt forms, for use as a herbicide. Among the salt forms disclosed are substituted ammonium salts, a genus which admittedly encompasses the claimed salt. Richter does not specifically disclose the claimed 2-(2'-aminoethoxy) ethanol salt, however. Most notably, Richter discloses (emphasis and bracketed word ours):
Compositions in which X is substituted ammonium are amine salts of 2-methoxy-3,6-dichlorobenzoic acid [dicamba] and are prepared by the addition of the free acid to various amines. Typical amines which can be used to prepare such amine salts are dimethylamine, trimethylamine, triethylamine, diethanolamine, triethanolamine, isopropylamine, morpholine, and the like. The resulting products are, respectively, the dimethylamino, trimethylamino, triethylamino, diethanolamino, triethanolamino, isopropylamino, and morpholino salts of 2-methoxy-3,6-dichlorobenzoic acid.
Zorayan teaches the amine (H sub2 N(CH sub2 CH sub2 O) sub2 H) used to make the claimed salt, as well as the use of that amine in the preparation of surfactants for shampoos, bath preparations, and emulsifiers.
Wideman also teaches the amine disclosed in Zorayan.
The content of the remaining references is unnecessary to our decision.
The Board upheld the examiner's rejection of claim 1 as obvious, finding that the claimed 2-(2'-aminoethoxy) ethanol salt of dicamba and the diethanolamine salt of dicamba specifically disclosed by Richter were "closely related in structure," and that based upon the expectation that "compounds similar in structure will have similar properties," a prima facie case of obviousness had arisen. The Board found that Jones' rebuttal evidence (Rule 132 declarations and data reported in the specification) failed to "compare the claimed subject matter with the closest prior art," and accordingly did not serve to rebut the prima facie case. This appeal followed.
The Solicitor contends that the claimed salt falls within the genus of substituted amine salts of dicamba disclosed by Richter, and that, like Richter's genus, the claimed compound has herbicidal activity. Thus, the Solicitor urges, under the circumstances of this case, (1) the genus/species relationship and (2) the common utility of the claimed and prior art compounds support the Board's holding of prima facie obviousness. Moreover, the Solicitor adds, although the claimed compound is neither a homolog nor a position isomer of those salts specifically disclosed in Richter, it is structurally similar thereto, particularly the diethanolamino salt noted by the Board.
The question of "structural similarity" in chemical patent cases has generated a body of patent law unto itself. 1 Particular types or categories of structural similarity without more have, in past cases, given rise to prima facie obviousness; see, e.g., In re Dillon, 919 F.2d 688, 692-94, 16 USPQ2d 1897, 1900-02 (Fed.Cir.1990) (tri-orthoesters and tetra-orthoesters), cert. denied, --- U.S. ----, 111 S.Ct. 1682, 114 L.Ed.2d 77 (1991); In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) (); In re Hoch, 428 F.2d 1341, 166 USPQ 406 (CCPA 1970) (). However, none of these types of structural similarity are involved here. And in any event, this court has previously stated that generalization is to be avoided insofar as specific structures are alleged to be prima facie obvious one from the other. In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 872 (Fed.Cir.1985).
On the basis of the record before us, we cannot sustain the Board's conclusion that the claimed salt and the diethanolamino salt disclosed by Richter are so "closely related in structure" as to render the former prima facie obvious in view of the latter. The claimed salt is a primary amine with an ether linkage. The diethanolamino salt disclosed by Richter is a secondary amine, without an ether linkage:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
In addition, the only substituted ammonium salt of dicamba expressly disclosed by Richter having an ether linkage is the morpholino salt,...
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