Ochiai, In re

• Decision Date: 11 December 1995
• Docket Number: No. 92-1446,92-1446
• Citation: 37 USPQ2d 1127,71 F.3d 1565
• Parties: In re Michihiko OCHIAI, Taiiti Okada, Osami Aki, Akira Morimoto, Kenji Kawakita, and Yoshihiro Matsushita.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1565

71 F.3d 1565

37 U.S.P.Q.2d 1127

In re Michihiko OCHIAI, Taiiti Okada, Osami Aki, Akira

Morimoto, Kenji Kawakita, and Yoshihiro Matsushita.

No. 92-1446.

United States Court of Appeals, Federal Circuit.

Dec. 11, 1995.

Harold C. Wegner, Foley & Lardner, Washington, D.C., argued for appellant. With him on the brief were Herbert I. Cantor and Douglas P. Mueller. Of counsel was Don J. Pelto.

Fred E. McKelvey, Solicitor, Office of the Solicitor, Arlington, Virginia, argued for appellee. Nancy J. Linck, Solicitor, Arlington, Virginia, Lee E. Barrett, Associate Solicitor, John W. Dewhirst, Associate Solicitor, Albin F. Drost, Deputy Solicitor and Richard E. Schafer, Associate Solicitor, represented the appellee.

Before ARCHER, Chief Judge, ^* MICHEL, Circuit Judge, and CARRIGAN, District Judge. ^**

PER CURIAM.

This appeal is from the July 8, 1992, decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) affirming the examiner's rejection of claims 6 through 10 of Michihiko Ochiai et al.'s (collectively "Ochiai") application serial no. 07/462,492, claiming priority from parent application serial no. 642,356, filed December 19, 1975, now U.S. Patent No. 4,098,888 (methods for the manufacture of cephems). Ex parte Ochiai, 24 USPQ2d 1265 (Bd.Pat.App. & Int.1992). The real party in interest is Takeda Chemical Industries, Ltd., the assignee of any patent issuing from the application.

The rejection of the above claims was predicated on an asserted view of the law of obviousness, per 35 U.S.C. Sec. 103, in view of the combined teaching of six references. ¹ Because, under the legally correct method for determining obviousness, the claimed process is not obvious in view of the cited prior art references, we reverse.

The Invention

Ochiai's application is directed to a process for using an acyl side chain from a particular type of organic acid having a 2-aminothiazolyl group, and a particular type of amine to make a particular cephem compound having antibiotic properties. Claim 6, the principal claim on appeal, ² is as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Id. at 1266.

Ochiai's U.S. Patent No. 4,298,606 covers the cephem compound resulting from the process of claim 6, and Ochiai's U.S. Patent No. 4,203,899 covers the organic acid used in the process of claim 6. Id. at 1267. In other words, viewed as of the time the claimed process was invented, claim 6 recites a process of using a new, nonobvious acid to make a new, nonobvious cephem. The '606 and '899 patents, like the application at bar, claim priority from the December 1975 parent application.

The Rejection

The examiner rejected claims 6 through 10 as obvious in light of the combined teaching of the six references noted above. All six references, as Ochiai acknowledges, teach the use of a type of acid to make a type of cephem by a standard acylation reaction with the very same amine recited in claim 6. The examiner explained the rejections thusly in his answer to Ochiai's appeal to the Board:

It must again be stressed that the citation of six references is to demonstrate convincingly that a standard, conventional process of preparing cephalosporin compounds is being claimed. The only difference between what is being claimed and the prior art is the selection of a slightly different acylation agent [i.e., acid] to result in a slightly different final product. The closest prior art of the six references is represented by the Cook et al. 4,024,133 and, Gregson et al. patent 4,024,134. These two references use [sic, are] quite similar in their disclosure, Cook being the most [sic, more] relevant. Both of these references generically disclose the "2-amino-thiazolyl" group which appellants seek to introduce....

. . . . .

The examiner recognizes that the specific "2 amino thiazolyl" moiety has not been specifically named in [the] Cook et al[.] patent. However, Cook et al. when viewed from the standpoint of one skilled in the art would recognize the use of "2-aminothiazolyl" if the final products sought were to contain this moiety. This merely states the obvious....

. . . . .

The facts presented here are identical to those that occurred in the Durden decision

(In re Durden 226 USPQ 359). The acylating agent herein being used has been patented by appellants, see Ochia et al. 4,203,899. The final products have also been patented by appellants which appellants acknowledge, brief page 5 footnote 4. The only difference between the facts in Durden those Durden [sic] and the instant situation is that appellants have not admitted on the record that the process is obvious. Appellants seek to distinguish the Durden decision based on this difference. However, the Durden decision is believed to be controlling because of the reasoning used therein and not an admission or lack of admission of the obviousness of the process. The references discussed above abundantly demonstrate the routineness of the claimed process. Thus, the Court rejected the argument that a conventional manipulation or reaction was unobvious "notwithstanding the specific starting material or resulting product or both, is not to be found in the prior art".

(Emphasis in original). Importantly, the examiner conceded the total absence from the prior art of both the acid used and the cephem made in the process recited in claim 6. In addition, the examiner discussed no references containing any suggestion or motivation either (a) to reject known acids and select instead the particular one used in claim 6, or (b) to obtain the particular cephem made according to the process of claim 6.

On appeal, the Board affirmed the examiner's rejection. After reviewing the examiner's reliance on In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985), and the "standard" nature of the acylation reaction disclosed in the rejected claims, the Board acknowledged Ochiai's contention that the fact that "neither the final product nor the method of introducing the particular [acid] component were known, obvious or even remotely suggested in the prior art ... should be dispositive of the obviousness of the invention" recited in claim 6. Ochiai, 24 USPQ2d at 1267. The Board did not, however, find Ochiai's contention persuasive. According to the Board,

[w]e are not here concerned with the patentability of the starting materials, the final compounds or other processes of making the [cephem] compounds. We are concerned only with the claimed process and the patentability thereof. Cases such as In re Larsen, 292 F.2d 531, 49 CCPA 711, 130 USPQ 209 (CCPA 1961); In re Albertson, 332 F.2d 379, 51 CCPA 1377, 141 USPQ 730 (CCPA 1964) and, particularly, In re Durden, supra, all of which were directed to processes of making chemical compounds, are controlling herein.... In each case, a material A, either known or novel, was subjected to a standard process of reacting with a standard reactant, B, in order to produce the result expected from the reaction of A with B. Indeed in Albertson as in the instant case, the only manipulative step of the process is that which is embodied in the word "reacting."

Id. The Board also rejected Ochiai's assertion that cases such as In re Pleuddemann 910 F.2d 823, 15 USPQ2d 1738 (Fed.Cir.1990), In re Mancy, 499 F.2d 1289, 182 USPQ 303 (CCPA 1974), and In re Kuehl, 475 F.2d 658, 177 USPQ 250 (CCPA 1973), are in tension with Durden and Albertson and counsel allowance of the rejected claims. Distinguishing Pleuddemann, Mancy, and Kuehl as "method of using" rather than "method of making" cases, the Board summarized its decision as follows:

In the case before us, appellants have admitted the claims are directed to a process of making a desired AB product. The process steps, "introducing" A into AB or "reacting" A with B are standard processes used by practitioners in the prior art for reacting similar A moieties with the same B moiety. We are in agreement with the examiner that there is nothing unobvious in the particular process chosen and claimed by the appellants.

Ochiai, 24 USPQ2d at 1270 (emphasis in original).

Ochiai appeals, contending that both the examiner and the Board failed to apply the proper test for obviousness established by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966), and its progeny. Specifically, according to Ochiai, both the examiner and the Board, on the assumption that our decision in Durden controlled the outcome of the instant case, failed to weigh the specific differences between the claimed invention--with all its limitations--and the prior art references, the so-called "second Graham factor." See id. at 17, 86 S.Ct. at 693-94 ("Under Sec. 103 ... differences between the prior art and the claims at issue are to be ascertained[.]"). In addition, Ochiai contends that the decisions in Mancy and Kuehl, which, like all Court of Customs and Patent Appeals decisions, were in banc, limit the decision in Albertson to its facts.

The Solicitor, while defending the correctness of the Board's conclusion and, unlike the Board itself, doing so in the familiar terms of Graham, also asserts that a supposed irreconcilable conflict in our cases--between Albertson and Durden, on the one hand, and Pleuddemann, on the other--"makes it very difficult for patent attorneys to give cogent advice to clients or for patent examiners to render consistent decisions on the patentability (under Sec. 103) of processes involving the use of new and unobvious starting materials." Unlike Ochiai, however, the Solicitor asks us to take the opportunity to reaffirm the vitality of Albertson and Durden in the course of deciding this appeal.

The Issue

The issue before this court is whether the Board erred in upholding the examiner's rejection of claim 6 as obvious under 35 U.S.C. Sec. 103 in view of Larsen, Albertson, and Durden as interpreted by the PTO when neither the particular...