Application of Robert Joly and Julien Warnant , 376 F.2d 906 ( 1967 )

ALMOND, Judge.

This is an appeal from the decision of the Board of Appeals affirming the rejection of product claims 1 to 3 and process claims 8 to 12 of appellants’ application serial No. 81,272, filed January 9, 1961, entitled “Esters of 2-Enols of A¹ Steroids and Preparation Thereof.”

Generic product claim 1 is illustrative:

1. A compound having the formula

wherein X is selected from the group consisting of hydrogen and methyl, Y is selected from the group consisting of hydrogen and an acyloxy radical of a lower organic carboxylic acid having 1 to 7 carbon atoms and Y' is an acyl radical of a lower organic carboxylic acid having 1 to 7 carbon atoms.

Composition of matter claims 2 and 3 are directed to specific compounds, 2,21-diacetoxy - A¹- pregnene - 17a - ol - 3,11,-20-trione and 2-aeetoxy-16a-methyl- Axpregnene-17 a-ol-3,11,20-trione, respectively. Claims 8 to 12 are directed to a process for the manufacture of the claimed steroids, which appellants disclose in their specification to be “useful as intermediates” in the following terms:

The products obtained by the invention, the lower organic carboxylic acid esters of enols in the 2-position of A¹steroids, are particularly useful as intermediates in the preparation of steroids, especially steroids having a ketone group in the 2-position, such as 21 - acetoxy - pregnane - 17a - ol - 2,-3,11,20-tetraone and 16a-methyl-preg-nane-17a-ol-2,3,ll,20-tetraone by acid hydrolysis and customary separation steps.

The Board of Appeals rejected all claims for appellants’ failure to satisfy the requirements of 35 U.S.C. §§ 101 and 112. Here, as in In re Kirk, 376 F.2d 936, 54 CCPA-, decided concurrently, we are primarily concerned with the adequacy in law of the aforementioned assertions of usefulness in appellants’ original application. Here, too, we are particularly concerned with the applicability of the decision of the Supreme Court in Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69, to the present facts.¹

In their memorandum on reargument, appellants concede that, in view of Brenner v. Manson, the appealed process claims should not be found allowable unless we find the claimed compounds produced by that process to be “useful” under section 101. It is to that issue that we direct our attention.

The examiner finally rejected all claims for “insufficient disclosure of utility.” Analyzing the above disclosure in appellants’ specification, he stated:

* * * the applicants have stated only that the [claimed] final products may be converted to the corresponding 2-keto compounds, which compounds have no known utility. * * * [Emphasis supplied.]

The board agreed, adding:

The portions of the specification * * * show that the claimed compounds can be used to prepare the corresponding 2,3-keto compounds. Having arrived at that point, what has been accomplished? Appellants do not assert that the latter compounds have known utility * * *.

*•*»*# * * * * such conversion does not constitute a disclosure of utility for the claimed compounds because there is no disclosed utility nor any indication of a known utility for the 2,3-keto derivatives. A useless product does not become useful by virtue of conversion into another useless product. [Emphasis supplied.]

Appellants do not contend that a use for the claimed compounds, other than as starting materials or intermediates in a process'of making other compounds, was either known or obvious to one of ordinary skill in the art at the time their application was filed. Rather, they urge that the claimed esters are “useful as intermediates” in the preparation of certain 2,3-diketo steroids. Although appellants admit that “no specific utility is stated” for the two named 2,3-diketo steroids² which can be produced from the compounds of claims 2 and 3, they contend that those diketo compounds are “closely related” in chemical structure to compounds of known usefulness, viz. cortisone and prednisone. Appellants argue that “[t]he disclosure of a steroid as useful as an intermediate to make other steroids by specific disclosed reactions is an adequate disclosure of utility.”

We do not accept those arguments. There is no evidence of record that the particular 2,3-diketo steroids which can be obtained from the claim compounds possess properties or activities in common with the allegedly “closely related” compounds having known useful properties, cortisone and prednisone. Similar arguments were presented to, and rejected by, the Supreme Court in Brenner v. Manson, 383 U.S. at 531-532, 86 S.Ct. 1033, and this court in In re Kirk where we stated:

It cannot be presumed that a steroid chemical compound is “useful” under § 101, or that one of skill in the art will know “how to use” it, simply because the compound is closely related only in a structural sense to other steroid compounds known to be useful. * * *

Nor do we agree that the mere disclosure that a claimed chemical compound may be used as an intermediate to make other compounds, without regard for the usefulness of the latter compounds, is adequate under section 101. As we stated in In re Kirk:

* * * the conclusion is inescapable that, just as the practical utility of the compound produced by a chemical process “is an essential element” in establishing patentability of the process, [Brenner v. Manson] 383 U.S. 519, [86 S.Ct. 1033,] so the practical utility of the compound, or compounds, produced from a chemical “intermediate,” the “starting material” in such a process, is an essential element in establishing patentability of that intermediate. It seems clear that, if a process for producing a product of only conjectural use is not itself “useful” within § 101, it cannot be said that the starting materials for such a process — i. e., the presently claimed intermediates — are “useful.” It is not enough that the specification disclose that the intermediate exists and that it “works,” reacts, or can be used to produce some intended product of no known use. Nor is it enough that the product disclosed to be obtained from the intermediate belongs to some class of compounds which now is, or in the future might be, the subject of research to determine some specific use. •» # *

We conclude that appellants have not discharged their burden to show that the claimed subject matter is “useful” within the requirements of section 101.

The decision is affirmed.

Affirmed.

RICH, Judge.

Notice of Forthcoming Dissenting Opinion

I, like Judge Smith, whose sentiments I share, am now revising a dissenting opinion to cover this case and the companion Kirk case (376 F.2d 936, 54 C.C.P.A. -.), argued together December 5, 1966, and involving similar issues. I initially filed my tenative dissenting opinion in Kirk February 1 in response to a December 22 majority opinion therein and a January 24 opinion herein. Thereafter the majority opinion herein was 75% rewritten on February 8 and again, on February 20, its content, responsive in part to observations in my dissent, was reduced 50%. In the ensuing three weeks the court has conferred on a long agenda of cases and held a week of hearings March 6-10, upon the conclusion of which I resumed, on March 13, my revision of the dissent. On that day notice was given by the Chief Judge that these two cases “will go down Thursday, March 16.”

Protest to the arbitrary use of assumed power having proved futile, this unprecedented display of unseemly haste, condoned by the majority, necessitates this notice.

1 . This appeal was originally argued October 8, 1965, some five months prior to the decision in Brenner v. Manson on March 21, 1966. On November 10, 1966, this court restored the appeal to the calendar for reargument, and requested counsel to file memoranda “on the effect, if any, of Brenner v. Manson * * * on this appeal.” Argument on that question was heard December 5, 1966.

2 . In a letter dated April 6, 1962, appellants urged before the Patent Office that the 2,3-diketo steroids in turn “are known to be useful in the formation of A-nor steroids.” Insofar as the record shows, no evidence or argument was presented at that time or any other time in the proceedings below that any “A-nor steriod” which might ultimately be produced from the claimed compounds would itself be a useful product, the board noting: * * * there is nothing to indicate that the derivative dicarboxylic acid compounds or the ultimate A-nor compounds have any utility. * * * Appellants argue here that the particular 2,3-diketo steroid which is prepared from the compound of claim 2 can itself be used to prepare a compound of “recognized therapeutic activity,” A-nor cortisone. They rely on certain documentary material in their brief, not part of the evidence before the Patent Office, to support the proposition that A-nor cortisone, known to be useful at the time of filing their application, can be prepared from the claimed compounds. We have not considered that “evidence.” See In re Cofer, 354 F.2d 664, 53 CCPA 830.