WORLEY, Chief Judge.
This appeal is from the decision of the Board of Appeals affirming the rejection of claims 3, 5, 6 and 8-16 of appellants' patent application,
The application relates to pharmaceutical preparations containing 1-dehydro-6αmethylhydrocortisone
Various supplementary ingredients, such as diluents, binders, water, alcohol, surfactants, and suspending agents, are said to be suitable as carriers. Claims 3 and 14 are illustrative of the therapeutic use appellants make of their hydrocortisone derivatives:
Appellants' application is a continuation-in-part of their U. S. patent 2,897,218
1. A compound of the formula:
The examiner rejected the present claims as unpatentable over the claims of appellants' patent. He noted that the disclosure of the Sebek patent sets forth as a supporting utility for the compounds claimed therein their use as active ingredients in oral, topical and parenteral composition for treatment of inflammatory conditions, as well as their use as intermediates in preparation of other steroids. It was his contention that claims directed to one of the uses disclosed in the Sebek patent did not "involve invention separate from the invention claimed" in that patent. He relied on In re Byck, 48 F.2d 665, 18 CCPA 1208; and In re Freeman, 166 F.2d 178, 35 CCPA 920, in support of his position that appellants had but one inventive concept and are not entitled to a second patent.
The board approached the problem in a somewhat different manner, saying:
As seems clear from the views of the examiner and board, "double patenting" has been an expression subject to varied interpretations and tests by different people. The examiner seemingly thought that but one and the same invention is present in the Sebek patent and the instant application. The board was of the view the present application claims an invention differing from the already patented invention in obvious, unpatentable particulars. There may well be significant practical differences between the situation where there is one invention twice claimed and a situation where there are two inventions, one unpatentable over the other,
In effect, the board has stated that given the particular compounds of the Sebek patent claims, once they have passed into the hands of the worker in the art, the processes or compositions in which they can be used may or may not be obvious, depending on the nature of the compounds and the knowledge of the prior art. If they are obvious, a patent claiming the compounds secures to the inventor all the protection which legally is his due. Any prolongation of the period of that monopoly by embracing in a second, later-expiring patent obvious processes or compositions utilizing the compound is contrary to well established principles of law.
In asking us to reverse the board's decision, appellants concede in their brief that "an obvious second invention is not patentably distinct and would not merit the grant of a second patent." It is their position, however, that the claimed therapeutic use of the patented compounds is such an "extraordinary and unpredictable property" of those compounds that it cannot be regarded as obvious from the compound invention. They refer to several journal articles in the record and to other publications presented at oral argument and in their
We think that one of ordinary skill in the art, upon contemplating the nature of the subject matter of the Sebek patent claims in view of his knowledge that closely related steroid compounds have been combined with pharmaceutically acceptable carriers in a manner similar to that here and administered to treat inflammatory conditions, would find adequate suggestion of the subject matter as a whole which is claimed. Obviousness does not demand absolute certainty on the part of one of ordinary skill that the new material will be more or less successful in use than the materials known in the prior art.
We agree with the board that the cited publications, which extol the virtues of methylprednisolone compositions compared with such cortisone derivatives as hydrocortisone and prednisolone also used to combat inflammatory conditions, are not entirely pertinent to the present issue. Here the double patenting rejection is based on claims to the methylprednisolone compounds themselves. We do not find that literature to establish a patentable distinction between the compounds per se and the compounds in combination with a pharmaceutically acceptable carrier, such as water, the purpose of the carrier being to enable administration of the compounds. Rather, it appears the efficacy of appellants' compositions containing methylprednisolone and a carrier in therapy is due solely to properties of the active ingredients, properties which we do not find would be unexpected from a consideration of closely analogous steroids. We think it would be obvious to one skilled in the art to formulate the present compositions from the patented compounds and adapt them to the method of administration claimed.
The decision is affirmed.
SMITH, J., concurs in the result.
(1) In re Byck, supra, where claims directed to a coil coated with a certain phenolic condensation product were held to be directed to an obvious, unpatentable use of Byck's previously patented phenolic condensation product, in view of a reference showing coils coated with similar phenolic condensation products.
(2) In re Keim et al., 229 F.2d 466, 43 CCPA 784, where claims directed to a process of using certain emulsions (containing ketene dimers) to size paper were found to be unobvious over a commonly assigned patent claiming the emulsions per se. We noted in that decision that whether the appealed claims were directed to the only use disclosed in the patent for the composition, or to one of several uses (In re Maxwell, 188 F.2d 479, 38 CCPA 1011), was immaterial, the test being obviousness of the claimed use.