Application of Walter Charles Joseph Ross and Walter Davis

305 F.2d 878, 49 C.C.P.A. 1276, 134 U.S.P.Q. (BNA) 320, 1962 CCPA LEXIS 214

Opinions

MARTIN, Judge.

This is an appeal from a decision of the Patent Office Board of Appeals rejecting claims 1 through 5, all of the claims of appellants’ application for a patent on “Improvements in Chemotherapeutic Agents.”

The following claims are representative:

1. Compounds of the general formula:

in which R' is selected from the group consisting of hydrogen, methyl and ethyl radicals and n is an integer of from 1 to 4.

2. p-NN-Di- (2-chloroethyl) -aminophenoxypropionic acid.

3. A process for the manufacture of compounds of the general formula:

in which R" is selected from the group consisting of methyl and ethyl radicals and n is an integer of from 1 to 4, which comprises treating a compound of the general formula:

with phosphorus oxychloride.

Claim 3 recites a process for preparing the compounds of claim 1 wherein R' is methyl or ethyl. Claim 4 recites a process for preparing the compounds of claim 1 wherein R' is hydrogen, said process being the process recited in claim 3 plus an additional acid hydrolysis step. Claim 5 corresponds to claim 4 but is limited to a process for preparing the specific carboxylic acid recited in claim 2.

The references relied on by the examiner and board are:

British Patent 128,912 Oct. 30, 1919

Everett et al., Chemical Abstracts 44, 1431-2 (1950)

As the claims point out, the appealed application relates to certain organic chemical compounds and to processes for preparing them. The specification describes rat experiments which demonstrate, as admitted by the examiner and the board, that the claimed compounds are “effective tumour growth inhibitors when tested against transplanted Walker rat carcinoma.”

This appeal presents two issues. One issue relates to the utility of the claimed compounds and processes; the other issue. relates to the obviousness of the claimed processes in view of the cited prior art. We will consider these issues separately.

The examiner was of the opinion that “the treatment of transplanted Walker rat carcinoma is not sufficient utility to meet the statutory requirements,” that utility in treating human tumors could be inferred from the specification, and that appellants must demonstrate that the claimed compounds are “safe, effective and reliable” for treating tumors in humans and “accepted by the medical profession” for that purpose. Since those demonstrations had not been made, the examiner rejected all of the claims on the ground that there was “an insufficient proof of utility.”

The board sustained this rejection and in its opinion emphasized the position that “demonstrated effectiveness” of appellants’ compounds “in connection with transplanted Walker rat carcinoma” is not “sufficient proof of utility under the patent statutes.”

We have compared the facts in the instant case with the facts in In re Bergel and Stock, 292 F.2d 955, 48 CCPA 1102. We agree with the statement of the solicitor in his brief in the instant case that these two cases involve “an identical issue of utility in a fact situation of substantially identical nature.” We have considered all of the arguments of the examiner and the board in the instant case but we see no reason to decide this issue differently than we did in Bergel and Stock, supra, or in the case companion thereto, In re Bergel and Stock, 292 F.2d 958, 48 CCPA. For reasons set forth in Bergel and Stock, we reverse the decision of the board as to its rejections of claims 1 through 5 on the utility issue.

We turn next to the rejection of process claims 3, 4 and 5 as being obvious in view of the prior art of record. Appellants do not contend that the additional acid hydrolysis step recited in claims 4 and 5 is significant in determining the patentability of these two claims. Accordingly, we will treat the claims as a group, limiting our remarks hereinafter to claim 3.

As can be seen in claim 3, appellants’ process involves replacement of both -OH radicals in a (CH2CH2OH)2Ngrouping with -Cl by “treatment” with phosphorous oxychloride, POCl3.

The British patent discloses the transformation of (OHCH2CH2)2NC6H<tCOOR to (XCH2CH2)2NC8H4COOR by treatment with a “phosphorous halide.” In that reaction, R is an alkyl radical, for example, ethyl, and X is a halogen, for example, chlorine. The patent indicates that “C6II4” represents the “para” residue of a benzene ring and that (OHCH2-CH2)2N- is merely another mode of expression of the grouping which appellants symbolize as (CH2CH2OH)2N-. Appellants’ counsel admitted at oral argument that “phosphorous halide” could be considered as generic to phosphorous oxychloride. It is apparent, therefore, that this patent discloses the same type of replacement of -OH with -Cl recited in the appealed claims.

Everett et al. disclose the same specific chemical transformation disclosed in the British patent as well as several other analogous chemical transformations each involving the same type of replacement of -OH with -Cl. In two of these, POCI3 is specified as the chlorination reagent. One of the authors of the Everett et al. reference, W. G. J. Ross, is one of the appellants here.

The board agreed with the examiner that the appellants’ process is unpatentable over the cited references. The board stated, inter alia:

“ * * -* We regard the process as being a wholly obvious one from a consideration of the cited art, despite the fact that a novel chlorinated product is obtained by starting with its corresponding hydroxylated compound. * * *

“Appellants contend * * * that it cannot be assumed that hydroxyethylaminophenoxy lower acyl esters [appellants’ reactants] will act in the same way as hydroxyethylamino benzoates [prior art reactants], but they have presented no reason or authority for believing that the presence of the -0(CH2)n-group will take part in or affect the chlorination reaction in any way. The chlorination in the references takes place with the hydroxyl group and this is exactly the same reaction as occurs in appellants’ process.”

At oral argument, appellants admitted the relevancy of the British patent and the Everett et al. reference as prior art, but urged that their particular process as claimed is patentable because the new compounds which they obtain by that process, and which have been held by the Patent Office to be new and unobvious, have “especially valuable properties,” i. e., as tumor growth inhibitors

A similar situation faced this court in In re Larsen, 292 F.2d 531, 49 CCPA 711.¹ In that case, certain product claims had been allowed by the Patent Office, presumably because the products possessed unique and unexpected properties. The process used by Larsen to make his products was held by the Patent Office to be unpatentable over certain prior art. Although Larsen did not specifically urge patentability for his process because of any “especially valuable properties” of the products obtained thereby, he did urge patentability for the process on the ground that the products were patentable. We rejected that contention for the several reasons set forth in In re Larsen and we do not consider the fact that appellants’ products may have “especially valuable properties” a sufficient reason to reach a contrary result in the case at bar.

Appellants also urge, as they did throughout the prosecution of this case in the Patent Office, that the starting material specified in the process claims differs from any starting material previously used in this reaction in containing an -0(CH2)n- grouping, where n is 1, 2, 3 or 4,² and it was not possible to predict whether or how this grouping would affect the desired reaction with phosphorus oxychloride. On that matter, we agree with the position of the examiner and the board which we interpret to be that once the examiner had cited prior art showing the general reaction to be old, the burden was on appellants to present “reason or authority for believing that the group -0(CH2)n~ would take part in or affect the basic chlorination reaction [the transformation of CH2CH2OH)2N- to CH2CH2C1)2N~] disclosed in the references.” ³ This appellants did not do.

For these reasons, we affirm the board’s rejection of claims 3, 4 and 5 as being unpatentable over the prior art of record.

In summary, the board’s rejection of claims 1 through 5 on the utility issue is reversed and the board’s rejection of claims 3, 4 and 5 on the obviousness issue .is affirmed.

Modified.

1 . Larsen was not available to appellants until after their brief in this appeal had been filed, but it was discussed at oral argument.

2 . In specific claim 5, n is 2.

3 . Board’s decision on reconsideration.