Application of Karl Folkers

344 F.2d 967, 52 C.C.P.A. 1303

• Court: Court of Customs and Patent Appeals
• Decided: May 13, 1965
• Docket: Patent Appeal 7393
• Status: Published

Opinions

MARTIN, Judge.

The appealed claims of Karl Folkers’ application¹ are directed to N-panto-thenyl derivatives of two naturally-occurring amino acids, phenylalanine and his-tidine, and a method of preparing those derivatives by reacting the corresponding P-alanyl-amino acid with pantoyl lactone. While Folkers’ disclosure shows, and he originally claimed, naturally-occurring amino acids in general, only the following four claims remain:

12. The process of preparing N-pantothenyl-dl-phenylalanine which comprises reacting N-(p-alanyl)-dl-phenylalanine with pantoyl lactone.

13. The process of preparing N-pantothenyl-histidine which comprises reacting N- (|3-alanyl) -histidine with pantoyl lactone.

15. N-pantothenyl-dl-phenylalanine.

16. N-pantothenyl-histidine.

During prosecution, appellant removed a Brown et al. publication by a Rule 131 affidavit which was accepted by the Patent Office as showing a date of completion of the invention in the United States prior to April 1955, the publication date. A subsequently filed affidavit under Rule 132, apparently based on the identical factual showing as that given in the Rule 131 affidavit, carries appellant’s date of completion of the invention back prior to April 1954, the date of the following sole reference relied on:

Baddiley et al. J. Chem. Soc. (London) 1954, pp. 2803-2812. It is not controverted that Baddiley discloses a process of reacting pantolactone (pantoyl lac-tone) with |3-alanyl amino acids. While Baddiley does not show the (3-alanyl his-tidine or P-alanyl phenylalanine of the claims, other known naturally-occurring amino acids are shown.

The issue presented by the above facts is similar to that in In re Palmquist, 319 F.2d 547, 552, 51 CCPA 839, the principal difference being that here the rejection involves only one reference. While appellant, in urging that Baddiley has been overcome as a reference, relies on Palm-quist, and the solicitor seeks to distinguish that case on its facts, relying on In re Wenzel, 88 F.2d 501, 24 CCPA 1050, our decision here is governed by In re Foster, 343 F.2d 980, 52 CCPA ■ — , in which we overruled Palmquist.

Whatever right to a patent appellant may have had at the time the invention was made, it has been lost within the meaning of section 102(b) if, indeed, the claimed invention became obvious to one of ordinary skill in this art through the publication of the reference more than one year before appellant filed his application.

It was the examiner’s view that to be entitled to a patent, appellant must show that the substitution of other naturally-occurring amino acids for those listed in Baddiley would not be obvious. As the board noted, appellant has not controverted the examiner’s statement that the claimed invention would be obvious to one of ordinary skill in this art upon viewing Baddiley. Rather, appellant filed an affidavit under Rule 132 in an attempt to remove Baddiley, thus precipitating the issue of whether Baddiley gave rise to a statutory bar. The board held that appellant could not remove a publication whose date was more than a year prior to his effective U. S. filing date even though the disclosure therein did not identically disclose the claimed invention. The board also agreed with the examiner that the disclosure of the reference was sufficient to show that the claimed invention had been obvious to one of ordinary skill in the art for more than a year. Appellant’s brief argues the issue of a statutory bar under section 102(b), which in the exact words of the statute is “loss of right to patent.”

The respective dates of the Baddiley publication and of the filing of the parent application being more than a year apart, the time factor of the bar under section 102(b) is satisfied. Of course, if the publication did not describe the claimed invention or make the claimed invention obvious, then appellant could not have lost his right to a patent. However, we think that Baddiley, in showing processes and products which differ from those claimed only in the use of other known naturally-occurring amino acids, rendered the invention obvious at the time of its publication. That publication, although subsequent to the time appellant made the invention, brought the invention within the range of obviousness for more than a year prior to his filing date, and appellant, by virtue of section 102(b), has lost whatever right to patent he once may have had. The decision of the board is therefore affirmed.

Affirmed.

WORLEY, C. J., did not sit or participate in this decision.

1 . Application serial No. 862,031, titled “N-Pantothenyl Amino Acids and Processes for Preparing Them,” filed December 28, 1959, which is a continuation of application serial No. 558,615, filed January 12, 1956.