In re Arkley , 455 F.2d 586 ( 1972 )

Nigh, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claim 30 in appellants’ application serial No. 329,212, filed December 9,1963, for a cephalosporin-type antibiotic known as cephaloridine. No claim has been allowed. We reverse.

The Subject Matter Claimed

The appealed claim is drawn to a single compound, by structural formula, and reads:

30. A compound of the formula

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This compound is said to be a broad spectrum antibiotic, effective against both gram-positive and gram-negative micro-organisms, and to possess many other virtues not relevant here because of the nature of the rejection.

The Rejection

Appellants’ claim has been rejected as anticipated by U.S. patent No. 3,218,318, issued to Edwin H. Flynn November 16, 1965, on an application filed in the United States August 31, 1962, and available against appellants’ application by virtue of 35 USC 102 (e) as of its filing date. This reference discloses genetically a class of cephalosporin-type compounds having the following structural formula:

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in which R1, taken alone, is —OH, Ci-C8 acyloxy, or tertiary-amino,, R2 is —OH when R1 is —OH, R2 is —OH when R1 is.Ci-C8 acyloxy, R2 is —O- when R1 is tertiary-amino, R1 and R2, when .taken together, are —O—, n is zero or 1, R3 is Ci-C6 alkylene, and R4 is a hetferomono-cyclic radical containing O, S, and/or N. Appellants “conservatively” estimate that over 230,000 compounds (including, concededly, theirs) are embraced within this generic disclosure, and the board in turn conceded that, “If this were the only anticipatory disclosure in the reference,” the disclosure would be “too diffuse” to support a 102 rejection.

However, the board found: (1) that Flynn’s examples 4 and 10 “adequately disclose the exact precursors of the presently claimed compound”; (2) that Flynn’s statement that

Cephalosporin C is also readily converted into compounds of the cephalosporin Ca type by refluxing in aqueous solution with an excess of pyridine, for example, as described in Belgian Patent 693,777.

was adequate to teach how to convert the C-type precursors disclosed in examples 4 and 10 to the CA-type compound claimed by appellants; and (3) that Flynn’s statement that, “in general, those .compounds which possess the cepholosporin C nucleus are more effective anti-bacterially than those containing the cephalosporin G nucleus” provided the “motive * * * to follow this additional teaching * * Putting these three findings together, the board held that

The indicated combination of Example 4 or 10 with * * * [the teaching of how to convert “Cephalosporin C * * * into compounds of the cephalosporin Ca tjrpe”] is not a matter of obviousness within the meaning of 35 U.S.C. 103 but of direct teaching within the four corners of the patent.

The effect of this holding, of course, was that the board did not have to look at the extensive objective evidence which appellants had offered to rebut any inference of obviousness which might be thought to arise from the teachings of the Flynn patent.

Opinion

The sole issue in this case is whether cephaloridine is “described" in the Flynn patent within the meaning of that word in 35 USC 102(e).¹ It is to be noted that rejections under 35 USC 103 are proper where the subject matter claimed “is not identically disclosed or described” (emphasis ours) in “the prior art,” indicating that rejections under 35 USC 102 are proper only when the claimed subject matter is identically disclosed or described in “the prior art.” Thus, for the instant rejection imder 35 USC 102(e) to have been proper, the Flynn reference must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has no place in the making of a 102, anticipation rejection.

In this case we have no difficulty in deciding that the portions of the Flynn reference relied upon by the Patent Office do not identically' describe the claimed subject matter. As appellants point out, the compounds of Flynn’s examples 4 and 10 are the “exact precursors” of' appellants’ compound “only to the extent that appellants have discovered that cephaloridine will be formed if the acid [disclosed in example 10] is first selected and then carefully reacted with a particular tertiary amine which also must be selected.” (Emphasis in original) . Of course, it does appear that the “particular tertiary amine” to which appellants refer is pyridine, which is mentioned elsewhere in Flynn as an example of the class of reactants² with which a particular cephalosporin C-type compound (namely, cephalosporin C itself)' may be converted into compounds of the cephalosporin CA type, but there is nothing in the teachings relied upon by the Patent Office which “clearly and unequivocally” directs those skilled in the art' to make this selection nor any indication that Flynn ever made the selection himself. Similarly, while it is reasonable to suppose that Flynn’s teaching; that “in general, those compounds which possess the cephalosporin' CA nucleus are more effective antibacterially than those containing the cephalosporin C nucleus” would provide some “motive” for those that followed him to concentrate their investigations on compounds possessing the cephalosporin CA nucleus, that motivation is a very general one, pointing to no particular one of the myriads of compounds, actual and potential, containing the cephalosporin CA nucleus.

The board, apparently recognizing the weakness of its position in attempting to arrive at an anticipation by combining the disclosures in examples 4 and 10 with the above-quoted teaching elsewhere in the patent of how to convert a particular, different cephalosporin O-type compound into cephalosporin CA-type compounds, postulates certain teachings which might have been in the reference patent any one of which, according to it, if present would have removed all doubt concerning the completeness of the anticipation.³ The simple answer to .the board’s argument is that these teachings were not contained in the Flynn patent and that we do not regard the teachings which were there and which were relied upon below as the equivalent of those which were postulated by the board. We do not read into references things that are not there.

Although the board declined to discuss four relatively recent decisions by this court in cases involving description requirements in various sections of the patent statute ⁴ on the ground that “the issue [of anticipation] is essentially a factual one,” it did consider the older case of In re Armstrong, 47 CCPA 1084, 280 F. 2d 132, 126 USPQ, 281 (1960.), to be “apposite on this point.?’ There this court reversed the board, finding support.f or process claims reciting the use of sodium carbonate although the example in the specification advanced las support for the claims used sodium hydroxide. However, in the first place, the Armstrong case was decided well before the line of cases beginning with Busohig II, supra,⁵ which have significantly tightened up on the application of the description requirement in the first paragraph of 35’ USC 112, and, in the second place, the opinion in Armstrong points out that appellants’ specification stated that alkali hydroxides and alkali carbonates could be used “interchangeably” in their process. The opinion stresses this equivalency, which involved a tiny number of variables in comparison to the situation here. There are no equivalent “blaze marks,” to quote the language of Busohig II, in the case at hand.

Accordingly, we will not sustain the rejection on the ground on which it was made. Concerning the rejection as it is reformulated by the dissent, we express no opinion. It may be that the Patent Office should have relied upon the portions of Flynn on which the dissent relies, or it may be that they had very good reasons for not doing so. In any event, they did not rely on those teachings in Flynn, and appellants have therefore had no opportunity to comment thereon. We do not conceive that it is part of our duty to make better rejections for the Patent Office, even if we could be sure that we really were making a “better rejection,” nor do we think that it would be consistent with the requirements of due process for us to do so for.the first time on appeal, without notice to the affected party.

Furthermore, we point out that we are not granting appellants a patent, if that is what the dissent means by “bestowing on the applicants a license to litigate.” We are simply reversing a rejection on the ground that the claim on appeal is anticipated under § 102 by Flynn. It may well be that it is unpatentable because obvious under § 103 in view of Flynn, but no such rejection is before us. The Patent Office is free to make such a rejection after our decision in this case should it think it appropriate. In re Ruschig, 54 CCPA 1551, 379 F. 2d 990, 154 USPQ 118 (1967); and In re Fisher, 58 CCPA 1419, 448 F. 2d 1406, 171 USPQ 292 (1971). In any event, it is the Patent Office which grants patents, not this court. It may further be observed that it is not now the practice in this court, if it ever was, to apply a different standard in cases which are in “complex areas of technology” than we do in easily understood cases.

The decision of the board is reversed.

1 At one time appellants contended that Flynn was not an “enabling disclosure/’ In re LeGrice, 49 CCPA 1124, 301 F. 2d 929, 133 USPQ 365 (1962), but we gather that they have abandoned that contention on appeal, although there is still an ambiguous reference to LeGrice in their briefs.

2 Tlie parties argue, in essence, about whether the words “for example” in the sentence “Cephalosperin C is also readily converted into compounds of the cephalosporin Ca type by refluxing in aqueous solution with an excess of pyridine, for example, as described in Belgian Patent 593,777” refers to the word “pyridine” or the words “ais described.” Appellants argue that “it is to be stressed that pyridine is only being suggested as an example of the tertiary amine[s] suitable for the reaction with the prior art compound eephadosporin C,” while the solicitor seems to be taking the position that Flynn’s specification would be read as indicating that the Belgian patent was one place among many where those skilled in the art could learn how to react cephalosporin C with pyridine. While the matter is not free from doubt, we think it more likely that the sentence would be read in the former way because the presence of the word “type” after “Ca” and not after “C” suggests that one particular C-type compound (namely, cephalosporin C itself) can be changed into various CA-type compounds by refluxing it with an excess of the proper reactant. This interpretation of the controverted sentence is reinforced by the next sentence in Flynn’s specification, which is as follows :

The reaction is applicable in general to the tertiary amines, of which numerous examples are given above, yielding corresponding derivatives of the cephalosporin Ca type wherein the tertiary amine is attached to the methyl group in the 3 position of the thiazine ring, and forms an inner salt with the carboxyl group in the 4 position. ■

3 These postulations were contained in the following passage from the board’s opinion :

There would be no doubt of the completeness of the anticipation if,. paraphrasing column 3, lines 47 to 00, the following language were present at the end of each of Examples 4 and 10 :

“This compound is also readily converted into a compound of the cephalosporin CA type by refluxing in aqueous solution with an excess of pyridine, for example, as described in Belgian Patent 593,777.”

Likewise, there would be no question of the applicability of column 3, lines 47 to 50, if that sentence were introduced by the words “Any one of the compounds of Examples 1 to 15 is also readily converted into compounds of the CA type * * *” or “Any one of the herein specifically named cephalosporin C compounds is also readily converted into compounds of the CA type * * *”

4 In re Ruschig, 52 CCPA 1238, 343 F. 2d 965, 145 USPQ 274 (1965); In re Kalm, 54 CCPA 1466, 378 F. 2d 959, 154 USPQ 10 (1967); In re McLamore, 54 CCPA 1544, 379 F. 2d 985, 154 USPQ 114 (1967); and In re Ruschig, 54 CCPA 1551, 379 F. 2d 990, 154 USPQ 118 (1967) (Ruschig II).

5 Among the most recent of these are In re Ahlbrecht, 58 CCPA 848, 435 F. 908, 911, 168 USPQ 293, 296 (1971); In re Lukach, 58 CCPA 1233, 442 F. 2d 967, 969, 169 USPQ 795, 796 (1971); and Fields v. Conover, 58 CCPA 1366, 443 F. 2d 1386, 1391-92, 170 USPQ 276, 279-80 (1971).