In re Schoenewaldt (343 F.2d 1000, 1965)

MARTIN, Judge.

This appeal is from the board’s affirmance of the rejection of the single claim in an application, serial No. 541,299, titled “Chemical Compound and Process of Preparing the Same,” filed by appellant on October 18,1955.

The invention is an ester derivative of hydrocortisone. The claim reads:

“1. A 4-pregnene-l lp, 17a,21-triol-3,20-dione 21-hemisuccinate having the following structural formula:

The compound is produced by reacting succinic anhydride with hydrocortisone in a pyridine medium at room temperature for 22 hours. The succinic anhydride “selectively” esterifies the hydroxyl on the #21 carbon.

Since only one carboxyl group of the two available in succinic anhydride reacts, the product derivative is called a half- or hemisuccinate, or a 21 hemisue-cinate, which name also indicates the position of the ester group in the molecule. We «hall refer to the claimed compound simply as hydrocortisone hemi-succinate. Also, it should be noted that in referring to hydrocortisone hemisuc-cinate, we mean the derivative in which the hydroxyl on the #11 ring carbon is in what is known as the |3 steric configuration. We shall also have occasion to refer to that 11-hydroxyl in the a configuration.

The sole disclosure of the utility and properties of this compound is stated by appellant as: “When * * * [hydro-cortisone hemisuccinate] is administered parenterally, it is characterized by an extremely rapid onset of hydrocortisone action making it a drug of choice in cases of medical emergency.”

Both appellant and the solicitor present preliminary questions concerning the two references in the record.

They are:

Minion 2,656,366 Issued Get. 20, 1953

Filed July 27, 1950, and

Murray et al. 2,861,088 Issued Nov. ¡8, 1958

Filed April 10, 1952.

Comparing the dates of these references with appellant’s filing date of October 18, 1955 it is -clear that the Murray et al. patent (hereinafter Murray) was copend-ing. Appellant contends that 35 U.S.C. § 102(e), under which the effective date of a domestic patent is its filing date, applies only to references which are fully anticipatory in nature, and not to references used in a section 103 rejection, contrary to this court’s holding in In re Harry, 333 F.2d 920, 51 CCPA 1541.

In response the solicitor contends that since appellant did not raise that issue before either the examiner or Board of Appeals, it is not properly before this court, especially in view of In re Pana-grossi, 277 F.2d 181, 47 CCPA 904, 906, and In re Wohnsiedler, 315 F.2d 934, 50 CCPA 1153. Appellant’s reply brief in rebuttal argues that since this is solely a question of law, rather than a question of technical facts, the issue may be raised here for the first time.

We do not think the solicitor is correct in his contention. The section 102 (e) question may be properly raised here for the first time because we must determine whether the reference is available. The particular question, whether we may consider the Murray reference, must be settled prior to determining the legal effect of the disclosure of that reference.

We find no compelling reason to overrule our recent decisions in In re Harry, supra, or In re Kander, 312 F.2d 834, 50 CCPA 928, In re Zenitz, 333 F.2d 924, 52 CCPA 746, or our earlier decision in In re Gregg, 244 F.2d 316, 44 CCPA 904, or go contrary to the Court of Appeals of the District of Columbia circuit, Hazeltine Research, Inc. v. Ladd, 340 F.2d 786, cert. granted 380 U.S. 960, 85 S.Ct. 1108. Thus Murray being available as prior art for a section 103 rejection, we look next to see whether that section is satisfied.

Minion describes production of cortisone hemisuccinate by the same process as appellant uses with hydrocortisone. Cortisone differs from hydrocortisone in having a keto group [0=C<] rather than a hydroxyl group [HO