Application of David Neville Kirk and Vladimir Petrow

376 F.2d 936, 54 C.C.P.A. 1119

• Court: Court of Customs and Patent Appeals
• Decided: April 10, 1967
• Docket: Patent Appeal 7522
• Status: Published

Opinions

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the rejection of claims 11, 25, 26, 28, 29, 39, 41 and 45 in appellants’ application¹ entitled “1-Dehydro-6-Methyl Steroid Compounds.”

Each claim defines a specific steroid compound, claim 11 relating to a compound of the spirostane series; claims 25, 26, 28, 29 and 45 to compounds of the androstane series; and claims 39 and 41 to compounds of the pregnane series. It is unnecessary to reproduce any claim since the nature of the compounds will become apparent.

The Patent Office rejected all claims for failure of the specification “to comply with 35 U.S.C. §§ 101 and 112.” As we view the record, we are concerned with not only the legal adequacy of appellants’ disclosure of “how to use” the claimed compounds under 35 U.S.C. § 112,² but also the legal adequacy of assertions of usefulness in the original specification under 35 U.S.C. § 101.³ We are particularly concerned with the applicability of the decision of the Supreme Court in Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69, to the facts here ⁴

The appropriate starting point for disposition of those issues is appellants’ specification, which begins with several general statements as to how the claimed compounds are useful:

It is an object of the present invention to provide a process for the conversion of 3-oxo-A ⁴-6-methyl and 3-oxo- A4:6-6-methyI steroidal derivatives into the corresponding 1-dehydro-derivatives which are a new class of compounds often possessing high biological activity.

The present invention provides new 1-dehydro-derivatives of 3-oxo-A4:6-6-methyl and certain 3-oxo- A ⁴-6-methyl steroids having the formula

(with or without a double bond at the 6:7 position) which 1-dehydro-deriva-tives are of value on account of their biological properties or as intermediates in the preparation of compounds with useful biological properties as herein indicated or as is apparent to those skilled in the art. ******

The invention also provides the following new steroidal 6-methyl-l :4-dien-3-ones and 6-methyl-l :4:6-trien-3-ones which are of value in steroid technology, in the furtherance of steroidal research and in the application of steroidal materials to veterinary or medical practice, whether as tablets, elixirs, injections, implants, or other types of pharmaceutical preparation well known to those skilled in the art. (Emphasis supplied)

The description continues with lists of specific compounds of the cholestane, spirostane, androstane and pregnane steroid series together with a recital of “uses” for the compounds recited in the lists. Two compounds of the spirostane series are disclosed, one of which, 6-hydroxy - 6 - methyl - 25D - spirosta-1:4-dien-3-one, is the subject of claim 11. They are said to be

* * * of value as intermediates in the preparation of 6-methylated aromatic steroid hormones into which intermediates they may be converted by reaction in solution in acetic anhydride with toluene-p-sulphonic acid. (Emphasis supplied)

Eighteen compounds of the androstane series are disclosed. The five recited in the claims are

176 - Hydroxy-6:17a - dimethylandros-ta-l:4:6-trien-3-one [Claim 45]

17a - Ethynyl - 176 - hydroxy - 6 - methylandrosta - 1:4:6 - trien - 3 - one [Claim 25]

176 - Acetoxy - 4:6a - dimethylandros-ta-1:4-dien-3-one [Claim 26]

9a - Fluoro - 116:176 - dihydroxy - 6a :17a - dimethyl - androsta - 1:4 - dien-3-one [Claim 28]

176 - Hydroxy - 6a - methyl - 17a-(prop-l-ynyl) androsta-1:4-dien-3-one [Claim 29]

They are said to be

* * * of value as intermediates in the preparation of 6-methylated aromatic steroidal hormones, into which they may be converted by reaction in solution in acetic anhydride with toluene-p-sulphonic acid, as intermediates in the preparation of biologically active compounds and in some cases on account of their biological properties. (Emphasis supplied)

Some sixteen compounds of the pregnane series are disclosed, including the two compounds of claims 39 and 41,

6a - Methyl -16a :17a - isopropylidene-dioxy - pregna - 1:4 - diene - 3:20 - dione [Claim 39] and

20:20 - Bisethylenedioxy - 6a - methyl-pregna-l:4-dien-3-one [Claim 41].

They are alleged to be

* * * of value as intermediates in the preparation of compounds with valuable biological properties such as progestational properties or properties associated with the adreno-cortical hormones or as intermediates in the preparation of compounds with useful biological properties. (Emphasis supplied)

Appellants’ arguments are, in the main, two-fold. They first contend that the specification is adequate to comply with § 101 and § 112 because it discloses that the claimed compounds “have present and useful biological activity of the nature known for analogous steroidal compounds,” and that “one skilled in the art would know how to use the compounds of the claims to take advantage of their presently-existing biological activity.” The second argument is that the specification adequately discloses that the compounds “have use as intermediates in the production of aromatic steroidal hormones and other biologically useful compounds,” and that the examiner has admitted one skilled in the art would know how to use the claimed compounds as intermediates for that purpose. The respective arguments present somewhat different considerations, and will be discussed separately.

I. The Asserted “Therapeutic or “Biological” Activity

In his final rejection, the examiner stated:

All the claims are again rejected as lacking adequate utility. The disclosure fails to indicate to one skilled in the art how one is to use the novel compounds of this invention. The therapeutic properties are stated in such general terms i. e., “useful biological properties”, that it fails to convey any useful information to one skilled in the art and further fails to state which of the claimed compounds have a therapeutic activity. * * *

In response, appellants submitted argument that the rejection “is not warranted,” and also submitted an affidavit of one of the applicants, a Dr. Petrow, which appellants summarized in a letter accompanying the affidavit and substantially reiterate in their brief here:

Attached hereto is an affirmation of Vladimir Petrow which shows that one skilled in the art would be able to determine the biological uses of the claimed compounds by routine tests. The Petrow affirmation specifically shows that * * * [the steroid of] (Claim 25) in the well-known McPhail modification of the Clauberg Assay possesses progestational activity on oral administration. The natural hormone, progesterone, on the other hand shows no response on oral administration in the same test. Accordingly, it is quite evident that the compound of claim 25 is a valuable oral pro-gestational agent. This affirmation, accordingly, is proof of the fact that one skilled in the art would have no difficulty in determining whether or not the 1-dehydro derivatives of the pregnane series, as claimed, have value biologically as progestational agents. (Emphasis supplied)

In addition, the Petrow affirmation * * * discloses the determination of the anabolic activity of * * * the compound of claim 26. It is shown by standard test procedure that this compound does have anabolic activity and that, in addition, it has a much higher anabolic/androgenic ratio than that of testosterone propionate, a well-known anabolic agent. * * *

Further * * * the oral progesta-tional activity of * * * the compound of claim 39, is set forth by virtue of well-known test procedure. This pregnane derivative is shown to be approximately 4 times as active progesta-tionally on oral administration as * * a well-known oral progestational agent. * * * by means of other tests the compound of claim 39 has been found to have valuable anti-inflammatory activity greater than that of either cortisone acetate or hydrocortisone. By virtue of a further standard test procedure the gluco corticoid activity of the compound of claim 39 has been shown to be more than 10 times that of cortisone and hydrocortisone acetates.

The affirmation of Dr. Petrow not only shows that the compounds claimed do have biological activity as asserted in the specification, but that the nature of such biological activity can be readily determined by those skilled in the art by reason of standard test procedures.⁵

Appellants’ affidavit and argument went for naught, the examiner responding that

* * * the final rejection of all the claims in the case as lacking an adequate disclosure of utility is deemed sound and adhered to. * * *

In his Answer before the board, the examiner rejected the claims

* * * as failing to comply with 35 U.S.C. 101 and 112 in that the specification fails to teach those skilled in the art how to use the invention. * * *•

After reviewing the various passages of appellants’ specification relating to the uses of the claimed compounds and “how to use” them, he concluded:

* * * nowhere is there found a specific allegation of utility for any compound within the scope of the claims. Thus the specification does not describe the manner in such full, clear, concise and exact terms as to enable one skilled in the steroid art to use the compounds of the instant invention. * * * Appellants have not listed one specific use for their claimed steroids and as those skilled in the art know steroids are susceptible to hundreds of uses. What appellants are really saying to those in the art is take these steroids, experiment, and find what use they do have as medicines. (Emphasis supplied)

With regard to the Petrow affidavit, the examiner stated:

* * * it may be that oral progesta-tional activity can be determined by procedures well known in the art. * * * Once one knows that a compound does have utility as a progesta-tional agent, it is of course merely routine to determine at what doses this activity exists. In other words, if in the specification as filed there had been a specific allegation that the compounds herein claimed had progestational activity this would have been sufficient to satisfy 35 U.S.C. 112, since those skilled in the art would know how to use a steroid possessing progestational activity. Thus, the aforementioned affidavit is not determinative of the issue at bar which is if the specification as filed does not allege a specific utility would one skilled in the art know how to use the invention ?

The board agreed, adding that the reference in the specification to “biological properties” of the claimed compounds “is so general and vague as to be meaningless.” It found in the specification no reason to expect that any of the claimed compounds “presents the probability of usefulness in the same manner as a natural hormone.”

Appellants rely on the allegations in their specification that the disclosed compounds have “biological activity” as adequate disclosure of a use for the claimed compounds, stating:

The disclosure teaches that the novel compounds are, in some cases, of value because of their presently existing biological activity. The application * * teaches that such steroidal materials may be applied to veterinary or medical practice in the form of tablets, elixirs, injections, implants or other pharmaceutical preparations. In other words, the compounds in- question are to be used in the manner of other steroid hormones in veterinary or medical compositions.

They also rely on the Petrow affidavit as evidence of the proposition that one skilled in the art would know how to use the claimed compounds, and assert that “the Board erroneously, completely ignored the Petrow affirmation confirming, present useful hormonal activity of some of the compounds * * *.”

We are not persuaded by appellants’ arguments that their specification meets the requirements of §§ 101 and 112. It seems to us that the nebulous expressions “biological activity” or “biological properties” appearing in the specification convey no more explicit indication of the usefulness of the compounds and how to use them than did the equally obscure expression “useful for ‘technical and pharmaceutical purposes’ ” unsuccessfully relied upon by the appellant in In re Diedrich, 318 F.2d 946, 50 CCPA 1355.⁶

Nor does the Petrow affidavit help appellants’ cause here. While that affidavit may show that three of appellants’ claimed compounds do in fact possess specific anabolic, anti-inflammatory or glucocorticoid activity or usefulness as oral progestational agents, that is not the issue before us. It is what the compounds are disclosed to do that is determinative here. In that regard, it is appropriate to note that the specification does not even intimate that the claimed compounds of the spirostane and preg-nane series themselves have “biological activity,” much less the specific progesta-tional, glucocorticoid or anti-inflammatory activities mentioned in the affidavit. With respect to the eighteen androstanes that are disclosed, five of which are claimed here, it is said they “are of value * * * in some cases on account of their biological properties.” (Emphasis supplied.) There is no suggestion which an-drostanes are of value for that reason, or what biological properties make them useful.⁷

Thus we agree with the solicitor that appellants’ affidavit is simply an ex post facto affirmation irrelevant to the issue of adequacy of the original disclosure inasmuch as it attempts to add statements of usefulness to the disclosure of the application as filed. Indeed, the sum and substance of the affidavit appears to be that one of ordinary skill in the art would know “how to use” the compounds to find out in the first instance whether the compounds are — or are not —in fact useful or possess useful properties, and to ascertain what those properties are. It amounts to an admission that experimentation would be necessary to determine actual uses — or possible lack of uses — of the compounds, as well as how to employ them in a useful manner. But surely Congress intended § 112 to presuppose full satisfaction of the requirements of § 101. Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention. As this court stated in Die-drich, quoting with approval from the decision of the board:

We do not believe that it was the intention of the statutes to require the Patent Office, the courts, or the public to play the sort of guessing game that might be involved if an applicant could satisfy the requirements of the statutes by indicating the usefulness of a claimed compound in terms of possible use so general as to be meaningless and then, after his research or that of his competitors has definitely ascertained an actual use for the compound, adducing evidence intended to show that a particular specific use would have been obvious to men skilled in the particular art to which this use relates.

As the Supreme Court said in Brenner v. Manson:

* * * a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. * * *

Appellants further argue that the board had no grounds for concluding there was “no definite expectation from the specification” that any one of the claimed compounds “presents the probability of usefulness in the same manner as a natural hormone.” According to appellants, “The analogy to known natural and synthetic hormones [presumably appellants intend to draw an analogy in chemical make-up or constitution between the claimed compounds and, for example, the natural hormone progesterone] enables one to predict that the new compounds would possess similar hormonal activity.” Moreover, since some of the disclosed compounds of the pregnane series, not claimed here, were stated in the specification to be of value on account of their hydrocortisone-like anti-inflammatory properties, appellants contend that “it would not be unreasonable to predict that others of this series [i. e. the claimed pregnane derivatives] would also have this property.”

Similar arguments were advanced before, and rejected by, the Supreme Court in Brenner v. Manson, 383 U.S. at 531-532, 86 S.Ct. 1033. We find no error in the board’s position on the facts of this case, absent a disclosure in the specification that the requisite properties of the claimed compounds are also similar to those of a natural or synthetic hormone of known activity. Appellants’ arguments fail to recognize that many steroid compounds may possess no activity whatsoever. It cannot be presumed that a steroid chemical compound is “useful” under § 101, or that one of skill in the art will know “how to use” it, simply because the compound is closely related only in a structural sense to other steriod compounds known to be useful. Cf. In re Adams, 316 F.2d 476, 50 CCPA 1185, dissenting opinion.

We conclude that appellants’ specification does not comply with § 101 and § 112 merely on the statements of “biological” activity recited therein.

II. The Asserted Usefulness as an “Intermediate”

As can be seen from the portions of the specification quoted earlier, appellants disclose that the claimed spirostane and androstane derivatives may be used as intermediates in the formation of 6-methyl aromatic steroids, and that the claimed pregnane derivatives may similarly be employed to produce steroids having “progestational properties” or “properties associated with the adreno-cortical hormones.” ⁸

The examiner has conceded that “those skilled in the art would know how to produce aromatic steroids” from the claimed compounds. However, he did not believe the inquiry into the adequacy of the disclosure should stop there, noting;

* * * As to the portions of the disclosure which indicates that the claimed compounds are useful as intermediates in the production of 6-methy-lated aromatic steroids, applicants have failed to show even one useful aromatic steriod which corresponds to the claimed intermediates. In other words, applicants’ statement of utility is to the effect that the novel compounds claimed herein are useful in making other novel compounds which have no known use. In the Examiner’s opinion this is not suffieent nor does the Examiner know of any decision holding that such a statement is adequate. (Emphasis supplied)

Appellants contend that the examiner’s holding⁹ “is straight into the teeth” of the decision of this court in In re Nelson, 280 F.2d 172, 47 CCPA 1031. They urge that the present disclosure with respect to the usefulness of the claimed compounds as intermediates “is on all fours” with that in Nelson. In their view, the examiner’s requirement for disclosure of a use of the final products produced by carrying out the known process on the novel intermediates of the claims “is an absurdity” in view of Nelson and the further decisions of this court in In re Wilke, 314 F.2d 558, 50 CCPA 964, In re Adams; and In re Manson, 333 F.2d 234, 52 CCPA 739. They look upon the latter decisions as carrying forward the principle expressed in Nelson that, in their words, “there is no necessity for a specification to teach the use of an end product where such end product is not the invention claimed, but merely the result thereof.”

The decision in Nelson might well control here — if that decision were still a viable precedent. The question remains, however, whether the majority view in Nelson — that steriod chemical compounds may be useful under § 101 if they are useful to chemists doing research on steroids and can be used to produce steroids which are members of a general class some members of which are known to have useful thereapeutic properties — can possibly remain the law in view of Brenner v. Manson.

There the Supreme Court, in considering what renders a process useful under § 101, discussed the cases cited by appellants here, stating (all emphasis supplied) :

As is so often the case, however, a simple, everyday word [useful] can be pregnant with ambiguity when applied to the facts of life. That this is so is demonstrated by the present conflict between the Patent Office and the COPA over how the test is to be applied to a chemical process which yields an already known product whose utility —other than as a possible object of scientific inquiry — has not yet been evidenced. It was not long ago that agency and court seemed of one mind on the question. In Application of Brem-ner, 182 F.2d 216, 217, 37 C.C.P.A. (Pat.) 1032, 1034, the court affirmed rejection by the Patent Office of both process and product claims. It noted that “no use for the products claimed to be developed by the processes had been shown in the specification.” It held that “It was never intended that a patent be granted upon a product, or a process producing a product, unless such product be useful.” Nor was this new doctrine in the court. See Thomas v. Michael, 166 F.2d 944, 946-947, 35 C.C.P.A. (Pat.) 1036, 1038-1039.

The Patent Office has remained steadfast in this view. The CCPA, however, has moved sharply away from Bremner. The trend began in Application of Nelson, 280 F.2d 172, 47 C.C. P.A. (Pat.) 1031. There, the court reversed the Patent Office’s rejection of a claim on a process [product] yielding chemical intermediates “useful to chemists doing research on steroids,” despite the absence of evidence that any of the steroids thus ultimately produced were themselves thus ultimately produced tv ere themselves “useful.” The trend has accelerated,10 culminat-in the present case where the court held it sufficient that a process produces the result intended and is not “detrimental to the public interest.” 333 F.2d at 238, 52 C.C.P.A. (Pat.) at 745.

Stripped of the highly technical procedural differences, the basic issue here, as in Brenner v. Manson, is whether the burden resting on an applicant to show that his invention is useful within the requirements of § 101 has been satisfied. While Manson did not disclose any use at all for the steroid compounds produced by his process, the arguments he advanced as to why- those compounds were useful under § 101 correspond in substantial measure to the disclosure of the specification and the arguments relied on here. There can be no doubt that the insubstantial, superficial nature of vague, general disclosures or arguments of “useful in research” or “useful as building blocks of value to the researcher” was recognized, and clearly rejected, by the Supreme Court:

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. * * * The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point — where specific benefit exists in currently available form — there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. Respondent appears to concede that with respect to a product, as opposed to a process, Congress has struck the balance on the side of nonpatentability unless “utility” is shown. Indeed, the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole “utility” consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product. That proposition seems to us little more than an attempt to evade the impact of the rules which conced-edly govern patentability of the product itself. (Emphasis supplied)

Wholly aside from the controlling impact of that reasoning here, the conclusion is inescapable that, just as the practical utility of the compound produced by a chemical process “is an essential element” in establishing patentability of the process, 383 U.S. 519, 86 S.Ct. 1033, so the practical utility of the compound, or compounds, produced from a chemical “intermediate,” the “‘starting material” in such a process, is an essential element in establishing patentability of that intermediate. It seems clear that, if a process for producing a product of only conjectural use is not itself “useful” within § 101, it cannot be said that the starting materials for such a process— i. e., the presently claimed intermediates ■ — are “useful.” It is not enough that the specification disclose that the intermediate exists and that it “works,” reacts, or can be used to produce some intended product of no known use. Nor is it enough that the product disclosed to be obtained from the intermediate belongs to some class of compounds which now is, or in the future might be, the subject of research to determine some specific use.¹¹ Cf. Reiners v. Mehltretter, 236 F.2d 418, 421, 43 CCPA 1019, 1026, where compounds employed as intermediates to produce other directly useful compounds were found to be themselves useful.

It is impossible to reconcile the reasoning and conclusion of the majority in Nelson, Wilke, Adams and Szwarc with the majority view in Brenner v. Manson. Therefore, to the extent that those decisions are inconsistent with Brenner v. Manson and the views expressed herein, they must be, and are, overruled.

The decision is affirmed.

Affirmed.

RICH, Judge.

Notice of Forthcoming Dissenting Opinion

I, like Judge Smith, whose sentiments I share, am now revising a dissenting opinion to cover this case and the companion Joly case, 376 F.2d 906, 54 CCPA -, argued together December 5, 1966, and involving similar issues. I initially filed my tentative dissenting opinion herein February 1 in response to the December 22 majority opinion and a January 24 opinion in Joly. Thereafter the majority opinion in Joly was 75% rewritten on February 8 and again, on February 20, its content, responsive in part to observations in my dissent, was reduced 50%. In the ensuing three weeks the court has conferred on a long agenda of cases and held a week of hearings March 6-10, upon the conclusion of which I resumed, on March 13, my revision of the dissent. On that day notice was given by the Chief Judge that these two cases “will go down Thursday, March 16.”

Protest to the arbitrary use of assumed power having proved futile, this unprecedented display of unseemly haste, condoned by the majority, necessitates this notice.

1 . Serial No. 796,749, filed March 3, 1959.

2 . 35 U.S.C. § 112 reads in pertinent part:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

3 . 35 U.S.C. § 101 reads in pertinent part: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. (Emphasis supplied)

4 . This appeal was originally argued December 7, 1965, some three months prior to the decision in Brenner v. Manson on March 21, 1966. On November 10, 1966, this court restored the appeal to the calendar for reargument, and requested counsel to file memoranda “on the effect, if any, of Brenner v. Manson * * * on this appeal.” Argument on that question was heard December 5, 1966.

5 . The record shows that the “standard test procedures” involved the use of laboratory animals, specifically rats and rabbits.

6 . There this court affirmed the rejection of certain claims for failure of an application to comply with section 112, noting that it had no “specific disclosure as to just how the compounds are to be used.”

7 . Appellants also rely on this court’s decisions in In re Hitchings, 342 F.2d 80, 52 CCPA 1141; In re Dodson, 292 F.2d 943, 48 CCPA 1125; In re Krimmel, 292 F.2d 948, 48 CCPA 1116; and In re Bergel, 292 F.2d 955, 48 CCPA 1102, for the proposition that usefulness of compositions of matter under § 101 may be established by an appropriate demonstration that the composition lias useful properties or activities when tested in laboratory animals. Appellants correctly point out that the Supreme Court in Brenner v. Manson neither approved nor disapproved the reasoning and conclusions of those cases, 383 U.S. 531, 86 S.Ct. 1033. However, appellants’ reliance on those cases here appears misplaced. In those cases, the inventors had carried their invention substantially further than appellants here, pharmacological testing having proceeded to an extent that some particular salutary effects on conditions inimical to animals could be ascribed to the compounds in issue there. The general results of those tests were disclosed in the application as filed, in contrast to the situation here. See also Archer v. Papa, 265 F.2d 954, 46 CCPA 835, 121 USPQ 413; Blicke v. Treves, 241 F.2d 718, 44 CCPA 753.

8 . The disclosure with respect to the claimed pregnanes was characterized by the board as “even less helpful as to the manner in which these compounds may be used.” We note, as did the solicitor, that appellants do not disclose either broadly or specifically what steroids having “progestational” or “adreno-cortical” properties may be produced from the claimed pregnanes. There is no hint in the disclosure as to what additional molecular substituents, if any, must be present in the steroids to be produced from the claimed pregnanes to obtain the recited properties. Nor do appellants direct our attention to any specific compound, possessing some specific property and known to the art at the time they filed their application, which can be prepared from the claimed pregnanes.

9 . It is interesting to compare the rejections voiced by the examiner and board and summarized by the solicitor in Nelson, 280 F.2d 172, 176-177, 47 CCPA 1031, 1037-1039, with those raised here. For all intents and purposes, the rejections are identical. Although the board here found no decision “more directly relevant” than Nelson, nevertheless the examiner, board and solicitor all seek to distinguish it, urging that this court “evidently felt” that at least some of the products which could be made using Nelson’s compounds as intermediates would be final products usable with no experimentation for specific therapeutic end purposes. The court did not intend Nelson to have the narrow scope attributed to it by the Patent Office. The most the court knew about what could be done with Nelson’s C-19 14-hydroxy androstenes was that they could be used as intermediates to produce “steroids of a class at least some members of which are known to have useful therapeutic properties.” The court took that as no guarantee that any of the particular “final products” which might be produced from Nelson’s particular intermediates themselves would have the cardiac glycoside activity of other members of the class. As appellants correctly note in their brief:

In the Nelson case, one skilled in the art could not exactly predict what therapeutic properties the end products produced by the use of the claimed intermediates might have, nor could they predict that they would possess any at all. * * *

Appellants, however, also urge that their intermediates are “useful” substances even under the Patent Office interpretation of Nelson. They contend that the 6-methyl aromatic steroids produced from their claimed compounds are members of a class of aromatic estrogen compounds, some of which are useful commercially. They refer specifically to certain members of that class in their brief. But appellants have not disclosed or otherwise shown that any 6-methyl aromatic steroid which can be produced from their intermediates possesses activities in common with those commercial members of the aromatic steroid series. We cannot accept their arguments for reasons given under Part I of this opinion.

10 . In a footnote to the above comments, the Court added:

Thus, in Application of Wilke, 314 F. 2d 558, 50 C.C.P.A. (Pat.) 964, the court reversed a Patent Office denial of a process claim, holding that 35 U.S.C. § 112 (1964 ed.) was satisfied even though the specification recited only the manner in which the process was to be used and not any use for the products thereby yielded. See also Application of Adams, 316 F.2d 476, 50 C.C.P.A. (Pat.) 1185.

In Application of Szwarc, 319 F.2d 277, 50 C.C.P.A. (Pat.) 1571, the court acknowledged that its view of the law respecting utility of chemical processes had changed since Bremner. * * * (Emphasis supplied)

11 . It does not appear that appellants seriously disagree with us on the matter, for in their memorandum on reargument they state:

C. By analogy between a process for production of a product and an intermediate for producing an end product, such intermediate would not be useful within the meaning of 35 U.S.C. § 101 merely because it can be used to make the intended product, or because the end product belongs to a class of compounds now the subject of serious scientific investigation.