This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, sustaining the rejection of claims 1-3 of appellants' application
The claims are drawn to (1-aziridinyl) alkyl esters of polycarboxylic acids, which appellants disclose as being useful as inhibitors which retard the reaction of aluminum with various degreasing solvents, and as curing agents for acid terminated polymers. Appellants' compounds are prepared by a transesterification reaction between a polycarboxylic acid ester and a (1-aziridinyl) alcohol in the presence of an alkali metal alkoxide catalyst. The reaction conditions are
The byproduct methanol is preferably distilled out of the reaction mixture as it is formed, in order to drive the reaction to completion. The preferred catalysts are those in which the alkoxide radical is derived from the same aziridinyl alcohol as is reacted with the polycarboxylic acid ester.
Claim 1 reads:
Claim 2 recites that n is 2, and claim 3 recites that A is an alkylene or arylene group.
The appealed claims stand rejected under 35 U.S.C. § 102(a) as anticipated by
Both parties agree that the above language identifies di[2-(1-aziridinyl) ethyl] succinate, which compound is within the scope of all of the claims presently on appeal.
Tsou prepared the acetate, propionate and butyrate "model" compounds via a transesterification reaction between β-(1-aziridinyl) ethanol and ethyl acetate, methyl propionate and methyl n-butyrate, respectively. The reactants were mixed with sodium methoxide and heated at 80-90°C. The alcohols resulting from the transesterification were removed by distillation.
The examiner noted that Tsou's method of making the model compounds (which the examiner termed "alcoholysis") corresponds to the process described in appellants' specification for making the claimed compounds. The examiner considered that, in spite of Tsou's reported lack of success in making the succinate ester, the mere naming of the compound would suggest several ways of making it, including transesterification, to one of ordinary skill in the art.
The board agreed with the examiner. It considered that Tsou's teaching of the desirability of producing the aziridine derivative as possible cancer chemotherapeutics provided a "reason for making" the compounds therein described. With regard to Tsou's unsuccessful attempt to prepare the malonate and succinate esters the board stated:
The board concluded:
Appellants filed a petition for reconsideration, in which they pointed out an obvious error in the board's statement that claims 1-3 would be met by the malonate ester. Since the "A" moiety in the claims must contain at least 2 carbon atoms, the malonate ester would not be covered by the claims. The board apparently overlooked this error in its decision on the petition for reconsideration. Appellants disagreed with the board's conclusion that it was the transesterification reaction which was unsuccessful in producing the succinate ester. Appellants also argued that the board was merely speculating that one of the "numerous other known methods" would successfully produce the succinate ester. Appellants stated:
The board retained its previous position, stating that "there is no evidence in this record that would lead a skilled organic chemist to assume that the application of at least some of the numerous known esterification processes or other preparative methods for the formation of the dibasic acid esters of aziridinyl ethanol identified in Tsou et al. would not be operative. Compare in re Maloney [56 CCPA 1218, 411 F.2d 1321, 162 USPQ 98 (1969)]."
Whatever might have been the reason Tsou considered the attempted preparation of the succinate ester unsuccessful and regardless of what method was actually used in that attempt, we think that the clear import of the Tsou reference is that transesterification was used in the attempt and that the reference's authors were unable to make transesterification work. The Tsou reference itself fully establishes the competence of its authors in the art. Thus the only
Since it has not been established that methods for making the compound named in the Tsou reference were known or were described in that reference, it cannot be said that the reference would have placed the public in possession of the invention. In re Wilder, 429 F.2d 447, 57 CCPA 1314 (1970); In re Hoeksema, 399 F.2d 269, 55 CCPA 1493 (1968); In re Sheppard, 339 F.2d 238, 52 CCPA 859 (1964). The Tsou reference is therefore not an anticipation of the subject matter of the appealed claims. In re Brown, 329 F.2d 1006, 51 CCPA 1254 (1964). The solicitor attempts to distinguish the Brown and Sheppard cases on the basis that in those cases the method disclosed by the reference was not suitable for making the disclosed compounds, while in the present case appellants succeeded with the very method disclosed (as inoperable) by the Tsou reference. In our view this is no basis for distinction at all. The Tsou reference not only does not place the public in possession of the invention, it effectively directs the public away from the only method established in this record to be operable to make the claimed compound. Such a teaching is the antithesis of anticipation.
The decision of the board in reversed.