Application of Bill Elpern

326 F.2d 762, 51 C.C.P.A. 883

• Court: Court of Customs and Patent Appeals
• Decided: January 23, 1964
• Docket: Patent Appeal 7031
• Status: Published

Opinions

MARTIN, Judge.

This is an appeal from a decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1, 3, 5, 6, 10, 17 and 18 of appellant’s application serial No. 794,253, filed February 19, 1959, for 1, 2-BIS(SUBSTITUTED' PHENYL)-3, TERTIARY-AMIN 0-1-PROPANOLS. Eleven claims have been; allowed.

The following appealed claims are representative :

“1. Compounds having the

formula

R

Ar-C-CH-AN

I I

OH CH2N=B

wherein Ar and AN represent phenyl substituted by from one to three members of the group consisting of lower-alkoxy, lower-alkylmercapto- and halogen; R represents a member of the group consisting of alkyl having from four to ten carbon atoms, cycloalkyl having 5-6 ring' members, cycloalkyl-lower-alkyl having 5-6 ring members, phenyl-loweralkyl, and phenyl substituted by from one to three members of the group-consisting of lower-alkoxy and loweralkylmercapto; and N=B represents-a member of the group consisting of di-lower-alkylamino, 1-piperidyl, 1-pyrrolidyl, 4-morpholinyl, lower-alkylated 1-piperidyl, lower-alkylated 1-pyrrolidyl and lower-alkylated 4-morpholinyl.

10. 2, 3-Bis(4-methoxyphenyl)-5~ methy-1- (1-piperidyl) -3-hexanol.

17. 1, 1, 2-Tris(4-methoxyphe~ nyl)-3-dimethyl-amino-l-propanol.

18. 1, 1, 2-Tris(4-methoxyphe-nyl)-3-(1-piperidyl)-1-propanol.”

Claims 3, 5 and 6, which are sub generic to claim 1, are, in turn, generic to species claims 10, 17 and 18, respectively.

The references relied on are:

Denton et al. I 2,515,700 July 18, 1950'

Stoll et al. 2,599,497 June 3, 1952

Adamson 624,118 May 27, 1949

(British Patent)

Denton et al. II, Journal of the American Chemical Society, Vol. 71, page 2051 (1949)

As the appealed claims indicate, this .application relates to a group of tertiary-•amino-l-propanols useful as cardiac anti-.accelerators, coronary dilator agents and pituitary inhibitors. Both the Patent Of - fice and appellant agree that the claims on appeal include compounds:

wherein A may be an alkyl radical containing 4 to 10 carbon atoms or a phenyl substituted by a lower alkoxy, and B is

CH2CH2 1-piperidyl i.e. q_j 2 2

or a diloweralkyl amino, e. g. dimethylamino.

The Denton et al. references teach amino alcohols useful as antispasmodics and local anesthetics. These alcohols in-elude compounds depicted as:

with A and B having the same significanee as A and B in structural formula (I).

Stoll et al. describes basic stilbene derivatives of the formula:

wherein R represents lower alkyl radicals, or both R’s together with the nitrogen atom represent a piperidino radical, and R' represents lower alkyl or benzyl radicals.

An intermediate used in the preparation of the basic stilbene derivatives “may be” depicted as:

wherein B can have the same meaning as the B¹ in formulae (I) and (II) and R' represents a lower alkyl or benzyl radical,

Adamson² relates to the preparation of N-disubstituted y.y-disubstituted-y-hydroxypropylamines of the formula

wherein R1 and R2 are identical and are aryl, aralkyl or cycloalkyl groups optionally substituted, for example, by alkyl or alkoxy groups, R3 may be hydrogen or alkyl, R4 may be hydrogen, alkyl or aryl (optionally substituted for example by alkyl or alkoxy groups), R5 and R6 are the same or different and may be alkyl, aryl or aralkyl or —-NRJR6 may denote the piperidino-pyrrolidino-or morpholinogroups.

The board affirmed the examiner’s rejection of claims 1, 3 and 10 “on the Denton et al. I and II and Stoll et al.

references.” It also affirmed the examiner’s rejection of claims 5, 6, 17 and 18 “over Denton et al. I.” In so affirming, the board stated:

“The Examiner recognizes that the two phenyl groups of the bisphenyl compounds of Denton et al. j and jj not have a methoxy substituent, but he takes the position that such modification is obvious, particularly in view of Adamson II, -who shows analogous compounds of the type

‘where R1 and R2 are identical and are aryl, aralkyl or cycloalkyl groups optionally substituted for example by alkyl or alkoxy groups, R3 may be-hydrogen or alkyl, R4 may be hydrogen, alkyl or arl [aryl] (optionally substituted for example by alkyl or alkoxy groups), R5 and R6 are the same or different and may be alkyl, aryl or aralkyl or -NR5R6 may denote the piperidino-or morpholinogroups.’ * * * In a sense, the Adamson II compounds may be regarded as being related to certain of the presently claimed compounds as position isomers, the three phenyl (or alkoxy-phenyl) groups being located on the 1,1, and 3 carbon atoms rather than on the 1,1, and 2 carbon atoms, numbering the hydroxyl carbon as 1. As for Stoll et al., the Examiner recognizes that the hydroxyl carbon has a methyl [an ethyl] group rather than a higher alkyl group, such as isobutyl, attached thereto and that there is an extra methylene radical between the tertiary amine and the first substituted carbon atom, but he is of the opinion that these variations are of a homologous nature which are obvious to chemists of ordinary skill.”

Appellant argues that the compounds of Denton et al. always differ from his compounds in that the two phenyl groups are each unsubstituted while both of the phenyl groups in his compounds are lower-alkoxy-substituted. Appellant contends that Denton et al., in describing their compounds, give no indication that either of these two required phenyl groups could or should, out of the hundreds of possible substituents known, be substituted by a lower alkoxy.

As to Stoll et al., appellant contends that the compounds therein must have an ethyl (-C2H5) radical ³ while the closest carbon substituent in the corresponding position in appellant’s compound is a lower alkyl containing 4 carbon atoms. Furthermore, appellant argues that in the compounds of Stoll et al. there is an extra methylene (-CH2-) group in the chain “above the nitrogen (N) atom.” ⁴

Appellant further contends that affidavits submitted under Rule 132 rebut any possible presumption that the references’ compounds made the compounds of the appealed claims obvious.

Since the cited art does not disclose the claimed compounds, the issue is whether the cited art would, at the time the invention was made, make the claimed compounds obvious to a person having ordinary skill in the art to which the invention pertains.

The Denton et al. references

The Denton et al. (I) patent discloses basic 1,2-diphenyl-propanols, the introductory portion of the reference stating:

“The present invention is primarily concerned with a novel group of physiologically-active amino alcohols. More specifically, the invention is concerned with alcohols of the general type formula wherein ‘R’ is hydrogen, an alkyl, an aryl radical, a 1-6 membered aliphatic radical, phenyl, or a hydroxy, alkoxy or halogen-substituted phenyl radical; and ‘Am’ represents a tertiary amino radical.”

It is elear that the two phenyl groups® in Denton et al.’s propanols have no lower alkoxy substituents; and a careful analysis of the patent fails to show even a suggestion of such modification for any purpose. In fact, there is absolutely no implication in the Denton et al. patent that the phenyl groups depicted in formula (VI) can or should be substituted in any manner. Rather as shown by the patent’s descriptive portion, examples and claims, it seems to us that the patentees’ are concerned only with basic 1, 2-diphenyl-propanols devoid of substituents on the phenyl groups.

In contrast, careful analysis of appellant’s application shows that he has always emphasized a specific number and kind of substituents attached to the two phenyl groups of his bisphenyl compounds. Appellant’s application states:

“This invention relates to substituted diphenyl-ethane derivatives, and is particularly concerned with 1, 2-bis (substituted phenyl)-3-tertiary-amino-l-propanols further substituted in the 1-position by a hydrocarbon radical having from four to about ten carbon atoms or by a phenyl radical substituted by loweralkoxy or lower-alkylmereapto radicals. * * *

“Among the compounds included within the scope of my invention are those having the general formula

R I Ar-C-CH-Ar-I I OH CH2N=B I

wherein Ar and Ar' represent phenyl radicals substituted by from, one to three radicals selected from the class consisting of lower-alkoxy, loweralkylmereapto and halogen: * *” [Emphasis ours.]

The examiner has made reference to an Adamson patent to show that the inclusion of lower alkoxy groups in the Denton et al. compounds would be an obvious modification.

Although the appealed claims were rejected solely “on the Denton et al. I and II and Stoll et al. references” and “over Denton et al. I,” the examiner considered that no “invention” exists in the nuclear methoxy substituted derivatives of the compounds of Denton et al. references because Adamson “teaches the equivalence of hydrogen and alkoxy as nuclear phenyl substituents on compounds analogous to those claimed.” In the factual situation before us, we do not find Adamson to be pertinent.

As evidenced by formula (V), Adamson teaches the equivalency of hydrogen and alkoxy as nuclear phenyl substituents, the phenyl groups located on the 1,1 or 1,1,8 or 8 carbon atoms of the propanols. The Denton et al. patent relates to 1 ,2-diphen-yl-propanols, the phenyl groups being unsubstituted.^{5 6} Moreover, Adamson is restricted exclusively to Y,Y-disubstitutedY-hydroxy-propylamines. In contrast in Denton et al.'s propanols, the carbon atom bonded to the alcoholic radical may also be bonded to a hydrogen, i. e. in formula (VI) R may be hydrogen. Accordingly we do not think that Adamson teaches the equivalence of hydrogen and alkoxy as nuclear phenyl substituents on the compounds shown in the Denton et al. patent and therefore we will not sustain the examiner’s rejection of claims 1, 3, 5, 6, 10, 17 and 18 on the Denton et al. references.⁷

The Stoll et al. patent

The board has sustained the examiner’s rejection of claims 1, 3 and 10 on the Stoll et al. patent based on an “intermediate” depicted by formula (IV). As the board indicated, the examiner recognized (1) that the hydroxyl carbon in formula (IV) has an ethyl (-C2H5) group rather than a higher alkyl group, such as the isobutyl group, attached thereto as in appellant’s claimed compounds, and (2) that there is an extra methylene radical between the tertiary amino radical and the first substituted carbon atom.⁸ However, the board continued, the examiner was of the opinion that these variations are of a “homologous” nature which are obvious to chemists of ordinary skill.

Although the examiner has not so stated, we are apparently in the field of what has come to be called the “Hass-Henze Doctrine.” See In re Papeseh, 315 F.2d 381, 50 CCPA 1084. As this court said in Papeseh, the “Hass-Henze Doctrine” was evolved by the bar from this court’s opinions in the three eases In re Hass et al., 141 F.2d 122, 31 CCPA 895; In re Hass et al., 141 F.2d 127, 31 CCPA 903; and In re Henze, 181 F.2d 196, 37 CCPA 1009. In the Hass and Henze cases, this court considered claims drawn to members of a homologous series next adjacent a prior art member of the series. In the factual situation before us and comparing structural formulas (I) and (IV), we do not have such a relationship. Where an invention for which a patent is sought is a compound which is a member of an homologous series and the prior art discloses a nonadjacent member of that series, we do not consider the Hass and Henze cases authority for the legal presumption of obviousness of the claimed invention. See In re Mills, 281 F.2d 218, 47 CCPA 1185.

Accordingly in view of the admitted structural differences between formulae (II) and (IV) and appellant’s formula (I), we will not sustain the examiner’s rejection of claims 1, 3, 5, 6, 10, 17 and 18 on the Denton et al. and Stoll et al. references.

Since we are satisfied that the differences apparent in the structural formulae of the compounds of the appealed claims, when compared with the structural formulae of the references’ compounds relied on by the Patent Office are sufficient to make appellant’s compounds unobvious to a chemist of ordinary skill in the art, we need not consider the affidavits allegedly demonstrating unexpected properties.

For the foregoing reasons, the decision of the board is reversed.

Reversed.

1 . For ease of readability, in depicting the structural formute, we have used symbols A and B.

2 . This patent is designated as “Adamson H" by the examiner and board.

3 . See formula (IV).

4 . This is evident from a comparison of formulae (I) and (IV) wherein B can be either

or a

-N \ CBq-CBq CHa-CHí/ ch2 flower alkyl -N lower alkyl

5 . The phenyl groups are designated in the structural formulae depicted in the Denton et al. patent.

6 . Although the board considered the Adam-son compounds “as being related to certain of the presently claimed compounds as position isomers,” there is no rejection of the appealed claims on the Adam-son reference.

7 . Denton et al. II was considered by the board to be cumulative to Denton et al. I and we agree.

8 . This is easily seen by a comparison of formulas (I) and (IV), B in both formulse representing a tertiary amino radical.