Citations
- 305 F.2d 878
Full opinion text
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