This is an appeal from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining
Claims on Appeal
The following rejected claims are before us on appeal:
These claims define compositions which are aromatic polycarboxylic acids, and derivatives thereof, suitable for producing polymers useful for forming shaped objects, such as film, fiber, and molded parts.
Claim 1 reads on the compound 2,2',6,6'-tetramethylbiphenyl-4,4'-dicarboxylic acid (dicarboxylic acid TMBP). Claims 5-7 read on the compound 2,2',6,6'-tetramethylbiphenyl-4,4'-dimethyl ester (dimethyl ester TMBP).
The PTO has rejected these claims under 35 U.S.C. § 102 as being anticipated by Nomura et al.
[Emphasis added to highlight disclosure of claimed compounds, dicarboxylic acid TMBP and dimethyl ester TMBP.]
Nomura does not disclose a method for preparing either dicarboxylic acid TMBP or dimethyl ester TMBP. However, it does disclose a method for preparing 2,2',6,6'-tetramethybiphenyl-4,4'-dinitrile (dicyano TMBP). The PTO relies on two additional references, Lincoln
Appellant's main contention is that it was improper for the PTO to rely on Lincoln and Wagner to determine whether the disclosure of Nomura is sufficient to place the claimed subject matter in possession of the public,
In support of this proposition, appellant cites this court's opinions in In re Sheppard, 52 CCPA 859, 339 F.2d 238, 144 USPQ 42 (1964) and In re Wiggins, 488 F.2d 538, 179
Appellant argues that Nomura does not supply the required threshold amount of information, because the totality of his teaching with respect to the claimed compounds is no more than the recitation of the compounds and an allegation, unsupported by and inconsistent with the body of the reference, that such compounds were prepared and certain spectral properties measured. In that regard, appellant notes that the text of Nomura fails to name or disclose properties or preparation of the claimed compounds, whereas each of the other compounds named in the abstract is discussed in the text, and properties and preparations are reported.
The solicitor submits that under Samour the appropriate test to be applied to Nomura's disclosure is whether or not it placed the claimed compounds in possession of the public. He argues that "Nomura's publication clearly indicates that the ... [compounds] ... `were synthesized' ..." and, together with the Lincoln and Wagner references, is sufficient to support a rejection under 35 U.S.C. § 102, because it is established, by evidence extrinsic to the Nomura reference, that one of ordinary skill in the pertinent art would know how to prepare the indicated compound.
The solicitor argues that appellant's reliance on Wiggins and Sheppard as governing the present situation is misplaced, thus:
For a publication to constitute an anticipation of an invention and, thus, to bar the grant of a patent under 35 U.S.C. § 102, it must be capable, when taken in conjunction with the knowledge of those skilled in the art to which it pertains, of placing that invention in the possession of the public. In re LeGrice, 49 CCPA 1124, 1145, 301 F.2d 929, 944, 133 USPQ 365, 378
In In re Samour, supra, this court upheld the PTO's 35 U.S.C. § 102(b) rejection of chemical composition claims. The primary reference named a composition falling within the scope of the claims and indicated that it had previously been made and tested; additional references showed that a method of making this composition would have been within the knowledge of one of ordinary skill in the art. The court said:
571 F.2d at 563, 197 USPQ at 4-5. See In re Sasse, 629 F.2d 675, 681, ___ USPQ ___, ___ (Cust. & Pat.App. 1980). Accordingly, the PTO's use of the Lincoln and Wagner references to show that a method of making Nomura's dicarboxylic acid TMBP and dimethyl ester TMBP was in possession of the public was proper.
Nomura expressly states that the two compounds were synthesized and tested. Taking these statements at face value and bearing in mind the limited number of compounds disclosed by Nomura and the close similarity among them, we conclude that the dicarboxylic acid TMBP and the dimethyl ester TMBP would have been known to one of ordinary skill in the art. In Samour, the prior art reference stated that the involved composition cited had been made and tested, as does Nomura in this case. The record in Samour was bolstered by a microfilm showing the structural formula of the involved compound, with the notation that the compound was "without effect" or "without activity." Here, there is no independent evidence of actual testing of the compounds at issue. However, the dissenting opinion's conclusion that "one of ordinary skill in this art would have been uncertain
As to whether the Lincoln and Wagner references show one of ordinary skill in the art how to prepare the compounds, we agree with the board that awareness of a method of conversion from Nomura's nitrile precursors to the corresponding claimed compounds is substantiated by Lincoln and Wagner.
In view of the foregoing, we hold that the dicarboxylic acid TMBP and the dimethyl ester TMBP were in possession of
The rejection of claims 1 and 5-7 under 35 U.S.C. § 102(b) is affirmed.
I respectfully dissent. As stated in the majority opinion, for a publication to constitute an anticipation of an invention, and thus bar the grant of a patent under 35 U.S.C. § 102, it must be capable, when taken in conjunction with the knowledge of those skilled in the art to which it pertains, of placing that invention in the possession of the public. In re LeGrice and In re Brown, cited in the majority opinion.
Applying this rule in In re Samour, 571 F.2d 559, 197 USPQ 1 (Cust. & Pat.App. 1978), this court upheld the PTO's 35 U.S.C. § 102(b) rejection of chemical composition claims, where: the primary reference named a composition falling within the scope of the claims, and reported that said composition had been previously made and tested; and additional references evidenced that a method of making this composition would have been within the knowledge of one of ordinary skill in the art. The court explained:
571 F.2d at 563, 197 USPQ at 4-5.
The Samour case was not the first instance where this court reviewed such a multi-reference anticipation rejection of chemical composition claims. This type of rejection had been before the court in In re Wiggins, 488 F.2d 538, 179 USPQ 421 (1973). There, the primary reference disclosed compositions falling within the scope of the appealed claims, but reported that attempts to synthesize these compounds were unsuccessful. As in Samour, the PTO relied on an additional reference as evidence that a method of making these compositions would have been within the knowledge of one of ordinary skill in the art. However, in Wiggins, the court would not consider this additional evidence, reasoning that the mere naming of compounds by the primary reference did not constitute a description of the invention within the meaning of 35 U.S.C. § 102(b).
In the case at bar, the claimed compounds, dicarboxylic acid TMBP and dimethyl ester TMBP, are named in the first sentence of the abstract of Nomura. According to this statement, these two compounds along with ten other 4,4'-disubstituted-2,2',6,6'-tetramethyl-biphenyls
(TMBPs) were synthesized and the benzene-induced solvent shifts of their n.m.r. spectra were compared with those of a series of related compounds. However, the article that follows fails to mention either dicarboxylic acid TMBP or dimethyl ester TMBP. And the text of the article casts doubt as to the accuracy of the statement made in the abstract.
According to the statement in the abstract, the twelve TMBPs were compared
In light of all of these inconsistencies between the abstract and the body of the Nomura article, I conclude that one of ordinary skill in this art would have been uncertain from Nomura as to whether or not dicarboxylic acid TMBP and dimethyl ester TMBP had ever been prepared. Thus, the mention of the claimed compounds in the Nomura abstract amounts to no more than the mere naming of the compound, which under our rationale in Wiggins would be insufficient to constitute a description of the subject compounds.
In In re Sheppard, supra, this court had before it an allegedly anticipatory reference (Emeleus) having an equivocal disclosure with regard to the existence of the claimed chemical composition. Emeleus stated that either phenylsulfur pentafluoride (the claimed composition), or phenylsulfur trifluoride, (a composition falling outside of the claims) had been formed before decomposing. The court in Sheppard held, inter alia:
Here, the uncertainty which pervades Nomura compels the conclusion that Nomura does not contain a definitive recognition that the claimed compounds exist. Therefore, Nomura does not disclose all material elements of the claimed subject matter. Because Nomura is deficient in this regard, it was improper, in my opinion, for the PTO to resort to additional references to show that a method of making the claimed composition would have been within the knowledge of one of ordinary skill in the art.
Accordingly, I would reverse the decision of the board.
TABLE 4 Diefference of substitutent solvent shifts (SSS') between 4,4'-disubstituted 2.2'6,6'-tetramethylbiphenyls (III) and I-substituted 3,5-dimethylbenzens (V)
aSubstitutent o-H m-Mc NH 20.01 -0.07 NMc 2-0.06 -0.10 OH 0.00 -0.01 OMc -0.01 -0.05 Cl 0.07 -0.05 Br 0.08 -0.07 I 0.04 0.08 CN 0.11 0.15 NO 20.14 0.15 aSSS' values for ortho-ring proton ans for Meta-methyl protons can be calculated as the difference of SSS values for the appropriate protons of (III) and (V).
TABLE 1 H N.m.r. spectra of 4.4'-disubstituted 2,2',6,6'-tetramethylbiphenyls (III)
aSubstut. H(3,3',5,5') Mc(2,2',6,6') X (o-H) (m-Me) H in X H δ(CCl 6) 7.01 1.00 δ(C 6D 6) 7.10 1.89 Δ -0.00 -0.01 NH2 δ(CCl 6) 6.27 1.78 3.28 δ(C 6D 6) 6.28 1.97 2.65 Δ -0.01 -0.19 0.63 SSS 0.08 -0.18 NMc2 δ(CCl 6) 6.36 1.84 2.89 δ(C 6D 6) 6.65 2.11 2.68 Δ -0.29 -0.27 0.21 SSS -0.20 -0.26 OH δ(CCl 6) 6.47 1.82 4.13 δ(C 6D 6) 6.42 1.84 4.06 Δ 0.05 -0.02 0.07 SSS 0.14 -0.01 OMc δ(CCl 6) 6.54 1.84 3.77 δ(C 6D 6) 6.77 1.93 3.46 Δ -0.23 -0.09 0.31 SSS -0.14 -0.08 Me δ(CCl 6) 1.85 1.85 2.29 δ(C 6D 6) 6.91 1.94 2.23 Δ -0.07 -0.09 0.06 SSS 0.02 -0.08 Cl δ(CCl 6) 7.05 1.85 δ(C 6D 6) 7.01 1.59 Δ 0.04 0.26 SSS 0.13 0.27 Br δ(CCl 6) 7.21 1.88 δ(C 6D 6) 7.13 1.56 Δ 0.08 0.32 SSS 0.17 0.33 I δ(CCl 6) 7.41 1.84 δ(C 6D 6) 7.39 1.53 Δ 0.02 0.31 SSS 0.11 0.32 CN δ(CCl 6) 7.41 1.90 δ(C 6D 6) 6.86 1.35 Δ 0.55 0.55 SSS 0.64 0.56 NO2 δ(CCl 6) 7.98 2.00 δ(C 6D 6) 7.73 1.41 Δ 0.25 0.59 SSS 0.34 0.60 aδ(CCl 4), chemical shifts in CCl 4relative to tetramethylsilane (p.p.m.); δ(C 6D 6), checical shifts in [ 2H 4]benezene relative to tetramethylisilane (p.p.m.); Δ = δ(CCl4) - δ(C 6D 6); SSS (substitutent solvent shift), for definition, see text.
TABLE 3 1 H N.mr. spectra of 1-substituted 3,5-dimethyl-benezenes (V)
aSubstnt. H(2,6) H(4) Mc(3,5) H in X X (o-H) (p-H) (m-Mc) H δ(CCl 6) 6.85 b>6.87b 2.27 δ(C 6D 6) 6.87 a6.89a 2.11 Δ -0.02 -0.02 0.16 NH2 δ(CCl 6) 6.11 6.26 2.17 3.29 δ(C 6D 6) 6.06 6.38 2.12 2.79 Δ -0.05 -0.12 0.05 0.50 SSS 0.07 -0.10 -0.11 NMc2 δ(CCl 6) 6.22 6.22 2.23 2.89 δ(C 6D 6) 6.38 6.40 2.23 2.58 Δ -0.16 -0.24 0.00 0.31 SSS -0.14 -0.22 -0.10 OH δ(CCl 6) 6.32 6.44 2.22 5.21 δ(C 6D 6) 6.26 6.43 2.06 4.34 Δ 0.06 -0.01 0.16 0.87 SSS 0.08 -0.03 0.00 OMc δ(CCl 6) 6.39 6.45 2.26 3.71 δ(C 6D 6) 6.54 6.51 2.13 3.37 Δ -0.15 -0.06 0.13 0.34 SSS -0.13 -0.04 -0.03 Me δ(CCl 6) 6.64 6.64 2.29 2.19 δ(C 6D 6) 6.69 6.69 2.15 2.15 Δ -0.05 -0.05 0.04 0.04 SSS 0.03 -0.03 0.06 0.06 Cl δ(CCl 6) 6.88 6.78 2.29 δ(C 6D 6) 6.84 6.50 1.91 Δ 0.04 0.28 0.38 SSS 0.06 0.30 0.22 Br δ(CCl6) 7.07 6.81 2.28 δ(C 6D 6) 7.00 6.52 2.28 Δ 0.07 0.29 0.39 SSS 0.09 0.31 0.26 I δ(CCl 6) 7.27 6.86 2.26 δ(C 6D 6) 7.22 6.54 1.86 Δ 0.05 0.32 0.40 SSS 0.07 0.34 0.24 CN δ(CCl 6) 7.22 7.14 2.35 δ(C 6D 6) 6.71 6.58 1.78 Δ 0.51 0.56 0.57 SSS 0.53 0.58 0.41 NO2 δ(CCl 6) 7.76 7.24 2.42 δ(C 6D 6) 7.58 6.61 1.81 Δ 0.18 0.63 0.61 SSS 0.20 0.65 0.45 aFor definitions, scc footnote to Table 1. b Data from F.A. Bovey, F.P. Hood, E. Pier, and H.E. Weaver, J. Amer. Cem. Soc., 1967, 87, 2060. `Estimate from the chemical shifts of thje highest peacks in CCl 4and in [ 2H 6] benzene respectively.