Application of Alan J. Lemin

364 F.2d 864, 53 C.C.P.A. 1382

• Court: Court of Customs and Patent Appeals
• Decided: July 28, 1966
• Docket: Patent Appeal 7580
• Status: Published

Opinions

RICH, Acting Chief Judge.

This appeal is from the decision of the Patent Office Board of Appeals,¹ adhered to on reconsideration, affirming the examiner’s rejection of process claims 3-5 and composition claims 6-10 in application serial No. 32,518, filed May 31, 1960, for “Organic Compounds and Process.”

The invention is directed to a new use of an old compound and its position isomer. Appellant has found that a-ethynyl1-naphthalenemethanol and a-ethynyl-2-naphthalenemethanol are active against plant pathogenic fungi and that, when applied to seeds or to the soil in which the seeds are planted, effective control of the fungi is obtained. Claims 3 and 6 are illustrative:

3. A process for the control of fungal infestations of seeds and of soil which comprises applying to the locus to be treated a fungieidally effective amount of a compound selected from the class consisting of a-ethynyl1- naphthalenemethanol and a-ethynyl2- naphthalenemethanol.

6. A fungicidal composition which comprises a fungieidally effective amount of a compound selected from the class consisting of a-ethynyl-1-naphthalenemethanol and a-ethynyl-2-naphthalenemethanol dispersed in a carrier consisting of water containing a surfactant.

Claim 4 is directed to a process in which the chemical is applied to the seeds either before or after planting; claim 5 to a process in which the chemical is applied to the soil. Claim 7 is directed to an emulsifiable concentrate which comprises a surfactant, a water-immiscible solvent, and a fungicidally effective amount of the compound; claim 8 to a concentrate adapted to form an aqueous dispersion on dilution with water which comprises a surfactant, a water-miscible solvent, and a fungicidally effective amount of the compound; claim 9 to a dispersible powder which comprises a surfactant, an inert solid diluent, and a fungicidally effective amount of the compound ; and claim 10 to a dusting powder which comprises an inert solid diluent and a fungicidally effective amount of the compound. Concentrations of 500 to 10,000 parts per million are contemplated when using aqueous dispersions or oil-in-water emulsions for the treatment of soil.

The claims were rejected as unpatentable over:

Tanaka et al., “Antibiotics and Chemotherapy, Volume 9, pp. 151-155 (March 1959)

The sole issue, simple to state but not so easily resolved, is: does this reference teach or suggest to one of ordinary skill in the biochemical art that a-ethynyl-1-naphthalenemethanol would control plant pathogenic fungi on seeds or in soil? More specifically, the question is what certain terms used in the reference actually mean. The parties are in-total disagreement on this question.

Tanaka et al. disclose tests of certain synthetic acetylenic compounds performed by an agar streak two-fold serial dilution technique using sometimes two and sometimes three fungi, and two bacteria, as test microorganisms. Among those compounds tested is one of the two used by appellant as the active ingredient, a-ethynyl-l-naphthalenemethanol. The 2-naphthalene compound used by appellant is not disclosed in the reference and will not be discussed further since no claim is limited thereto. Each compound of the reference, dissolved first in acetone in adequate concentration, was diluted with the agar medium to the final concentration. One of the test fungi, Piricularia oryzae, is admittedly a pathogen to the rice plant.

The test results are reported as “minimal concentrations,” expressed as gg/ml,² “required for complete inhibition.” As to each of the four species, including P. oryzae, upon which the 1-naphthalene compound was tested, the symbol “ >50” is used to report the test results.³ It is over the interpretation to be given this expression that the dispute arises.

The gist of the Patent Office position is that Tanaka et al. say, in effect, that the compound has antifungal activity because the expression “ > 50” means, in the context used, that at some concentration greater than 50 gg/ml the compound gives “complete inhibition” of the microorganisms treated. The board, furthermore, felt “that the mere disclosure in the reference of testing the compound a-ethynyl-l-naphthalenemethanol as a fungicide renders the reference applicable against the instant claims,” and, while passing over the results of those tests and the significance thereof except to express disagreement with appellant’s argument that they show the compound lacks fungicidal activity, concluded that “To use a higher concentration of the fungicide and find it is effective as such, is believed to be within the skill of the art and not patentable.

Appellant contends there is no basis in law or in fact to support the board’s position — that the symbol “ > ” is a conventional designation in this kind of test-reporting and what it actually means to one of ordinary skill in this art is simply that the compound tested was ineffective at the highest concentration tested, here 50 ng/ml. Thus, appellant insists the reference says nothing at all, even by implication, about whether the compound is or would be effective at concentrations above 50 ng/ml, or whether Tanaka et al. found some inhibition at 50 ng/ml or less, an alleged fact the solicitor asks us to assume. Finally, appellant points out that Tanaka et al. themselves, obviously workers skilled in this art, call another compound which exhibited ‘‘complete inhibition” at 25 ng/ml “ineffective,” and, that being so, one of ordinary skill in this art would certainly not be directed toward using a compound found to be ineffective at 50 ng/ml.

Appellant’s case is based on two affidavits, which, because of the significance we attach thereto, are set out in full. The first affidavit submitted to the examiner and therefore before the board, reads:

LIONEL E. RHULAND, being duly sworn, deposes and says:

THAT, he is a bacteriologist having received the degree of Doctor of Philosophy in Bacteriology from the University of Indiana in 1951;

THAT, since 1951 he has been in the continuous employ of The Upjohn Company and is currently Research Manager of the Infectious Diseases Division of the Research Department of said company;

THAT, he has long experience in the testing of compounds for bactericidal and fungicidal activity and in the reporting and analyzing of data derived from said testing;

THAT, he has read and is familiar with the paper of Tanaka et al. published in Antibiotics and Chemotherapy, 9, 151-155;

THAT, in Table III on page 153 of the aforesaid paper there appears in tabulated form the results of testing a number of acetylenic compounds against two species (T. asteroides and P. oryzae) of fungi and two species (E. coli and B. subtilis) of bacteria;

THAT, the notation “ v 50” which is shown as the result recorded against all four of said microorganisms in said Table III for the compound a-ethynyl1-naphthalenemethanol (third compound) means, according to convention universally used in the reporting of such results, that the compound was tested in concentrations up to and including 50 ng/ml. and was found to be inactive at all such concentrations;

THAT, the paragraph immediately under Table III on page 153 of said paper states that all the active compounds, with the exception of one (1-naphthyl-l-oxo-hexa-2,-4 diyne; activity against B. subtilis recorded as 6 ng/ml. in Table II), were inactive against bacteria;

THAT, in reporting the results of testing of said compounds against bacteria the authors used the notation “ >50” in all cases except one, namely that of compound 6 in Table II where the notation “25” appears; and

THAT, accordingly, the authors are employing the term “>50” in accordance with normal convention as meaning no activity when tested in concentrations up to and including 50 ng/ml.

FURTHER, deponent sayeth not. The second affidavit, filed after the first board decision with a request to remand but treated by the board as a request for reconsideration, reads:

LIONEL E. RHULAND, being duly sworn, deposes and says:

THAT, I am the Lionel E. Rhuland who on January 14, 1963 executed an affidavit in the above-identified application in regard to a paper of Tanaka et al. published in Antibiotics and Chemotherapy, 9, 151-155; and thus being qualified further depose and say as follows:

I have again reviewed the data given by Tanaka et al. and reaffirm that there is no evidence of any activity against fungi for compounds in question. All that the symbol “ > ” means is that the compounds were not active, i. e., did not give complete inhibition, at the highest concentration tested. It does not mean or imply that the compounds in question were partially active at the highest concentration tested. Thus the paper conveys no information whatever indicating fungicidal activity for the compounds in question, complete nor partial.

Furthermore, if the compounds in question actually gave partial inhibition at the highest concentrations tested, this fact either was not observed by the authors or was deliberately withheld by the authors. In either case information to this effect is not communicated to me, and would not be communicated to any other persons skilled in the art by the paper.

FURTHER, deponent sayeth not.

The decisive question is whether appellant or the Patent Office gives to the expression “ > 50” a meaning corresponding to that used by workers in this field, for it is that interpretation which determines what information the reference conveys to one of ordinary skill in the art. It is this question of fact which controls the ultimate legal issue of whether the invention would have been obvious within the meaning of 35 U.S.C. § 103.

We think the affidavits speak for themselves. While the examiner is presumed to be an expert in his field of examination, and while, in the absence of instruction, we might be inclined to agree with him that “ >50” would seem to mean positive activity at some unknown concentration above 50 ag/ml, we must, in making determinations under section 103, give weight to the sworn statements of workers skilled in the art as to the meaning to them of symbols with which they, and not we, are familiar. This is particularly so when, as here, questions of convention and custom come into dispute. Having considered these statements, together with the arguments of the examiner, the board, and the solicitor, and noting the absence of any refutation of the factual statements in the affidavits on the part of the Patent Office, we accept the statements as to what the Tanaka et al. article discloses to one of ordinary skill in this art. Accepting it, we must find that it does not render the claimed invention obvious.

We see no merit in the Patent Office argument that the affidavits express mere opinions and do not state facts.

Further, as to the contention that Tanaka et al. might have observed some activity at the various concentrations used, our answer is that we are not concerned with what Tanaka et al. might have observed, but only with what they in fact reported and with what this would mean to one of ordinary skill in the art.

Accepting, as we do, appellant’s interpretation of the reference on the basis of unrefuted affidavits reciting the technical meaning of the symbology employed, we are of the opinion that the sole reference teaches nothing whatever about the properties, the discovery of which underlies the claimed inventions.

The board, on rehearing, said, “To use a higher concentration of the fungicide and find it is effective as such, is believed to be within the skill of the art and not patentable.” (Our emphasis.) This is tantamount to saying that those skilled in the art could discover what appellant discovered by doing what he did. This is unquestionably so, but the issue under the law is whether it would be obvious to do what he did. A reference which shows to workers in the field only that a compound is not effective up to 50 pg/ml. (and we so interpret it) is not a basis on which we can find obviousness.

The decision of the board is reversed.

Reversed.

1 . Consisting of Examiners-in-Chief Federico and Rosa and Acting Examiner-in-Chief Stone, the latter writing the opinion.

2 . 1 gg/ml corresponds to 1 part per million.

3 . For a better understanding of the form of reporting in the tables of the reference, an example of a compound showing complete effectiveness on some of the five test microorganisms in terms of the minimal concentrations (pg/ml) is this:

[compound] 3 1.6 6 > 50 > 50

The test on applicant’s compound reads thus, in four columns:

[compound] >50 >50 >50 >50