In re Grimme (274 F.2d 949, 1960)

WORLEY, Chief Judge.

This appeal is from the decision of the-Board of Appeals of the United States. Patent Office affirming the rejection by the Primary Examiner of the single-claim of appellants’ application for a. patent on penicillin salts of amino salicylates. The appealed claim reads:

“1. As a new chemical compound, a penicillin salt of an amino-salicylate having the general formula:

in which HX is penicillin in the form of its acid: R3 is a radical containing not in excess of 10 carbon atoms and selected from the group consisting of hydrogen, alkyl, and phenylalkyl radicals: and A is a saturated aliphatic hydrocarbon radical having 2 to 5 carbon atoms.”

The following references were relied! on by the examiner:

Goldberg et al. 2,493,625 January 3, 1950.

Goldman 2,547,640 April 3, 1951.

Grimme et al. 2,701,796 February 8, 1955.

Gewerkschaft etc. (Belgian) 506,999 November 30, 1951.

The application was filed August 31, 1954, and is a continuation in part of application No. 255,748, filed November 9, 1951, on which patent No. 2,701,796 was granted February 8, 1955. Appellants were granted a Belgian patent on November 30, 1951, having a disclosure corresponding to that of their earlier United States application. That patent was published March 27, 1953, more than a year prior to the filing of the appealed application.

The examiner rejected the claim primarily on the ground that it was drawn to the invention claimed in appellants’ patent No. 2,701,796, thus its allowance would result in double patenting; and, alternatively, that if the claim was drawn to a different invention then such invention was not supported by the co-pending application on which the patent was granted, thus allowance of the claim was barred by the Belgian patent.

The board reversed the rejection based