Application of Paul Schmidt and Max Wilhelm ( 1967 )

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the examiner's rejection of product claims 1 and 5 in appellants’ application¹ for “Piperazine Sulfonamides.”

The invention relates to the compound piperazine-N :N'-disulfonamide of the formula

The primary issue before us is the sufficiency under 35 U.S.C. § 112 of the disclosure in appellants' specification of the manner and process of using that compound. There it is said that the claimed sulfonamide “assists the liver function in hepatic² disturbances and can therefore be used as medicament in human and veterinary medicine.”

In his Answer, the examiner rejected the claims, among other reasons, as “predicated upon an insufficiency of disclosure of utility in the specification.” He was of the view that the above specification disclosure would not inform the skilled worker “how to use” the compound because the worker would not know which of the “myriad functions” of the liver the compound assists, stating:

* * * It is submitted that the aforesaid attestation communicates nothing to the competent artisan, witness: those diseases involving hepatic disturbance include, inter alia, jaundice, obstructive jaundice, hepatogenous jaundice, acute infectious hepatitis, noninfectious hepatogenous jaundice (toxic hepatitis), acute yellow atrophy, subacute yellow atrophy, acholuric jaundice, retention jaundice, carotenemia, hemolytic jaundice, passive congestion of the liver, congestive (cardiac) cirrhosis, portal hypertension, hepatic coma, cirrhosis of the liver, kwashiorkor, primary and secondary carcinoma of the liver, etc. In view of these hereinbefore mentioned teachings, can it reasonably be assumed that the application as a whole communicates to one skilled in the art how to carry out the avowed purpose of the specification? This Examiner thinks not.

In response, appellants urged that “if the functions of the liver are disturbed for any reason, this disturbance is diminished by administration of the new compound, the reason of the disturbance being immaterial.” (Emphasis supplied). Appellants noted that:

* * * If the function of the liver is disturbed, the aldolase activity in the serum, for example, is increased, not only in a certain affection of the liver, but in various hepatic diseases. The diminution of aldolase units in the serum is consequently a yardstick for the promotion of hepatic function.

* * *

They relied on an affidavit showing that, in contrast to a substituted piperazine disulfonamide compound in the prior art, the claimed compound diminished increases in levels of serum aldolase activity in laboratory rats, which had been induced by subsequent administration of allyl alcohol or carbon tetrachloride.

In a second Answer, the examiner replied to those arguments, observing that

* * * aldolase activity in the serum (which is nowhere mentioned in the specification) does not increase in all, or even in a great number of hepatic * * * diseases as appellants would lead one to believe. * * Appellants’ statement of utility would suffice only if it had read, “It assists the liver function in those hepatic disturbances involving the increase of aldolase and acid phosphatase units in the serum via diminution of the same.” * * * the artisan knowledgeable in diseases of the liver would not even have the remotest idea what to do with 1, 4-disulfamylpiperazine after reading Appellants’ specification. * *

In its first decision, the board reversed all the examiner’s rejections, including that stated above. Thereupon, the examiner requested reconsideration from the board, approval for that action having been obtained from various echelons in the Patent Office, including the First Assistant Commissioner. The board then rendered “a new decision,” concluded that its first decision “was in error,” and sustained the examiner’s rejection as above stated.

Before reaching the merits of the rejection, it is necessary to dispose of a preliminary matter. It appears that subsequent to the second board decision appellants petitioned the Commissioner of Patents to vacate that decision, urging that “there is no statutory basis” and “nothing in the rules” which provides for the “irregular” request by the examiner for reconsideration. The Commissioner stated:

* * * Title 35 Section 7 of the United States Code provides that “The Board of Appeals has sole power to grant rehearings.”, and Patent Office Rule 197 provides that a request or petition for rehearing must be filed within thirty days from the date of the original decision by the Board. Neither of those provisions is limited to a situation in which reconsideration is based on the request of the appellant rather than on that of the examiner. While requests for reconsideration by examiners are rare, it has been the settled practice to entertain them if circumstances justify them, as they appear to have done in the present case. To refuse to consider such requests would result in the anomalous situation that the Board would be powerless to correct any error in the appellant’s favor, although it could correct errors militating against the appellant. It is not considered that the procedure in this case is contrary to any applicable rule or statute.

Here appellants continue to urge that the second board decision be vacated and the first reinstated, relying on a footnote in Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966).³

It is the duty of the Patent Office to satisfy itself in the first instance that the statutory requirements pertaining to the obtaining of patents have been met. We are aware of no authority, and appellants cite none, which precludes the Patent Office from retaining jurisdiction in the prosecution of applications and correcting what it considers to be mistakes in its decisions, until the time for judicial review has expired or a patent has issued. Compare In re Citron, 326 F.2d 418, 51 CCPA 869. Quite evidently the board simply overlooked and misapprehended the examiner’s reasons in its first decision, and was convinced of its error upon review. Under the circumstances we see no abuse of discretion upon the part of the board in acting as it did here.

We turn now to the merits of the § 112 rejection. It is evident, and appellants do not contend otherwise, that the specification contains no specific disclosure as to just how the compound is to be used. Nor do appellants rely here on their argument below that “if the functions of the liver are disturbed for any reason, this disturbance is diminished by administration of the new compound.” Rather, appellants urge that other sulfonamides have been used to assist the liver function in particular hepatic disturbances. As evidence of that, they rely on an article by one Eger which is mentioned in their affidavit referred to earlier in this opinion. That article points out that some sulfonamides, such as sulfanilamide, sulfanylthiocarbamide, sulfonamidodiaminoazobenzene and sulfaphenazol, possess “hepatotropic activity” and “inhibit necrotic⁴ changes” i. e. they may protect the liver against damage from hepatitis and chemical attack by allyl alcohol. Appellants are of the view that the Eger article demonstrates that one skilled in the art would be knowledgeable in the manner of using the present sulfonamide.

The solicitor urges that we disregard the Eger article. Although that article is mentioned in the affidavit which was before the examiner, the solicitor contends that the affidavit contents were originally relied upon only to demonstrate patentability over certain prior art, but now, for the first time, appellants cite the article as evidence of the compliance of their disclosure with § 112.

Quite apart from those contentions, and giving appellants the benefit of the doubt on that score, we are not convinced the Eger article demonstrates error in the decision below. As the solicitor points out, appellants’ specification makes no reference to protecting the liver against necrotic changes, and the compounds mentioned by Eger are quite different in structure from that claimed here. Under the circumstances, it seems to us unduly speculative to assume that, merely because certain apparently unrelated prior art sulfonamides have been used to protect the liver from the adverse effects of hepatitis or chemical attack, one skilled in the art would immediately recognize that the present compound could be used in that manner.

It is not clear how appellants determined that their compound has liver assisting activity unless they actually used the compound against certain liver ailments or else depended on unfounded speculation. It does not appear that appellants have told what they know about the manner of using the compound. Appellants have neither described the method of use as to enable one skilled in the art to use the compound nor shown that one skilled in the art would know a priori how to use it. See In re Moureu, 345 F.2d 595, 52 CCPA 1363. As this court stated under similar circumstances in In re Lorenz, 305 F.2d 875, 49 CCPA 1227:

The term “necrotic” is a cognate of “necrosis”, which is defined at page 1002 of Stedman’s Medical Dictionary, Unabridged Lawyers’ Edition, 1961, as the pathologic death of one or more cells, or of a portion of tissue or organ, resulting from irreversible damage to the nucleus * * *

Appellants are seeking a seventeen year monopoly. We would remind them that if they have in truth invented something which promotes the progress of science and the useful arts, then in exchange for a patent grant they must make a full and complete disclosure of their invention, leaving nothing to speculation or doubt. That Congress so intended is evident from the strong and comprehensive language of Section 112 which appellants here have failed to satisfy.

The decision is affirmed.

Affirmed.

1 . Serial No. 130,753, filed August 11, 1961.

2 . The expression “hepatic” is defined in Webster’s New International Dictionary, 2nd Ed., as

Of, pertaining to, or affecting the liver.

4 . The solicitor’s brief states: