Application of Johannes Heyna, August Bauer and Klaus Berner

360 F.2d 222, 53 C.C.P.A. 1331

Opinions

ALMOND, Judge.

This is an appeal from the decision of the Board of Appeals affirming the rejection of claims 1-6 of appellants' application ¹ entitled "Yellow Water-Soluble Monoazo Dyestuffs." No claims have been allowed.

The issue is whether appellants' claimed chemical compositions are obvious under 35 U.S.C. § 103 in view of the following references:

Alsberg et al. 2,895,785 July 21, 1959 (Alsberg)

Muller et al. 2,424,493 July 22, 1947 (Muller)

In addition to the foregoing references, appellants cited the following references before the board in support of their arguments for patentability of the claims in issue:

Bolliger 2,799,672 July 16, 1957

Heyna et al. 2,657,205 Oct. 27, 1953 (Heyna)

Claim 1, which suffices as a description of appellants’ invention, reads:

1. Water-soluble monoazo-dyestuffs having the formula

wherein X represents a member selected from the group consisting of methyl and lower alkoxy, and Y represents a lower alkoxy group. Muller discloses yellow water-soluble dyestuffs, one of which has the structural formula:²

Muller further discloses that his diazo compounds may contain such nuclear sub-stituents as “halogen atoms, alkyl groups, alkoxy groups, nitro groups, and so forth” and that “pyrazolone sulfonic acids” (an SO3H group on the phenyl ring) are included among the coupling components embraced by the invention.

Alsberg discloses a yellow dyestuff having the structural formula:

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" width="1419"/>

Alsberg’s dyestuffs are used for dyeing natural or regenerated cellulose and react with the fiber.

Bolliger discloses a yellow dye prepared from a diazo component having the structural formula:

and a coupling component having the structural formula:

The product has the structural formula:

Heyna discloses a yellow dyestuff having the structural formula:

Appellants presented two arguments for patentability before the board and reiterate them here, the first relating to the structural nonobviousness of their claimed dyestuffs and the second to the unexpected properties exhibited by such dyestuffs.

Structural Nonobviousness

While conceding that the basic structure of their dyestuffs is disclosed by Muller and Alsberg, appellants contend that the reference teachings with respect to possible ring substituents are so broad as not to be suggestive of the particular number and location of the substituents in their compounds. The solicitor has attempted to answer this argument by showing that in fact the number of possible substituents disclosed by the reference is not as large as might appear at first blush.

While no doubt the greater the number of substituents disclosed by the prior art the less likely it will be that a particular substituent would be suggested to one of ordinary skill in the art, the more important consideration in an issue of this kind is the context in which such disclosure appears. In Alsberg and Muller, we have two disclosures which specifically set forth the skeleton structure of appellants’ claimed compounds and relegate to a general discussion a relatively few possible groups which may be substituted thereon. Further, Alsberg and Muller, like appellants, are concerned with dyestuffs of generally the same color (yellow) which are suitable for dyeing the same materials. So far as structure is concerned, therefore, we think that Alsberg and Muller, taken in their en-tireties, are suggestive of appellants’ claimed compounds. Accordingly, we find these compounds prima facie obvious from a consideration of structure.

Unexpected Property

Appellants submitted an affidavit³ in which five yellow dyestuffs, having the structural formulae set forth below, were tested for tinctorial strength.

The point sought to be proved by the affidavit was that whereas the addition of one methoxy group to the diazo ring (samples I and III) caused a decrease in the tinctorial strength vis a vis the unsubstituted diazo ring (sample II), two substituents (two methoxy groups in sample V and one methoxy and one methyl group in sample IV) caused an increase in the tinctorial strength.

This affidavit was criticized by the examiner and the board on two grounds, only one of which need be discussed in view of our agreement therewith. With regard to the affidavit, the board stated:

* * * the * * * comparative showing does not demonstrate, as urged by appellants, that the introduction of two auxochrome groups to produce an intensifying of shade would be unexpected since a single auxochrome group lowers the shade intensity and tinctorial strength. The comparisons in the affidavit are not proper since the differences between the various samples are much more than the single variable desired to be demonstrated; namely, the effect of the auxochrome group. Sample 1, as compared with appellants’ products (Samples 4 and 5) having two auxochrome groups, and the dyestuff of Alsberg et al. (Sample 2) differing from appellants’ products only in the lack of auxochrome groups in the azo component, further differs in that it is a vinyl sulfone instead of a sulfatoethyl sulfone, contains the sul-fone group in an isomeric position, and, in addition, includes two further sub-stituents (chloro and methyl) in the phenyl ring of the pyrazolone coupling component. Sample 3, the other dyestuff having a single auxochrome group differs from the Alsberg et al. and appellants’ dyestuffs not only in the number of auxochrome groups in the azo component, but also by virtue of the fact that it is an ethyl sulfate ester instead of a sulfate, and contains a sulfonamide linkage Instead of a sul-fone group in the azo component. Additionally, said sulfonamide group is attached in isomeric relationship, as is the sulfonic acid group in the phenyl ring of the pyrazolone coupling component. It can thus be seen that these numerous departures from the structure of the basic compounds, which would be expected of themselves to alter shade -and intensity of the dyestuff, render completely inconclusive the conclusion desired to be drawn by appellants from the comparative showing. We therefore do not consider that obviousness of appellants’ claimed dyestuffs to the chemist of ordinary knowledge and skill (35 U.S.C. 103) based upon the structural obviousness thereof has been negated.

It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property. In re Lohr, 317 F.2d 388, 50 CCPA 1274. We agree with the board that appellants have not met this burden. As the court stated in In re Dunn, 349 F.2d 433, 52 CCPA 1760: “The cause and effect sought to be proven is lost here in the welter of unfixed variables.”

We find the claimed compounds structurally obvious, and lacking proof of an unexpected property, we must affirm the board’s decision.

Affirmed.

1

. 3. Heyna, A. Bauer, and K. Berner, serial No. 88,022 filed February 9, 1961.

2

. We will adopt the solicitor’s designations for the various groups appearing in the structural formula. The designations are:

The five-membered ring at the right, containing two nitrogen (N) atoms, is designated for convenience herein, as pyrazolone. Depending from the latter is a 6-membered ring, designated * * * as phenyl. The other 6-membered ring (to the left) will be designated as the diazo ring. The chain portion HOgS-O-CH2CH2-SO2 attached to the diazo ring is herein designated as sulfatoethyl sulfone. The portion of the structural formula of .[the Muller] dyestuff * * *, as well as of the formulae considered hereinafter, located to the right of the -N=:]Sr- group, which portion includes pyrazolone, will he referred to as the coupling component.

3

. The initial board decision was rendered November 13, 1964. A request for reconsideration was submitted December 14, 1964, the last day permitted by statute. In the request, appellants asked leave to file a second affidavit to meet the board’s criticism of the first affidavit. The board refused such request in an opinion dated December 22, 1964. On the same date, the affidavit mentioned in the request was filed in the Patent Office. The board not having considered the second affidavit, we will not do so either. We note that the examiner’s answer dated May 5, 1964 also criticized the first-filed affidavit for substantially the same reasons as did the board.