Application of Christian Zickendraht and Arthur Buehler , 319 F.2d 225 ( 1963 )

WORLEY, Chief Judge.

Here the Board of Appeals has held that appellants have made but one patentable invention, therefore to grant the single claim involved in appellants’ application¹ entitled “New Metalliferous Azo Dyestuffs” would involve “double patenting.” Appellants argue that the instant claim is patentably distinct over the reference and is, therefore, entitled to patent protection.

The application relates to metallized azo dyestuffs prepared by reacting a cobalt or chromium-yielding reagent with certain monoazo dyestuff, such that two molecules of the latter are joined or complexed per molecule of metal. According to appellants’ specification, the monoazo dyestuff can be prepared by known methods, as by coupling, in an alkaline medium, a diazotized 2-amino-l-hydroxy-benzene-5-sulfonie acid amide, which may be referred to as the diazocomponent, with 1:3-diphenyI-5-pyrazo-lone, referred to as the coupling component. The metallized dyestuffs are said to be suitable for dyeing and printing a variety of materials such as silk, leather, wool and synthetic fibers of superpolyamides, superpolyurethanes or polyacrylonitrile.

The claim reads:

1. The complex metal compound which contains one atom of one of the metals selected from the group consisting of cobalt and chromium-bound in complex union to substantially two molecules of the dyestuff of the formula

The same day applicants filed the in■stant application, they filed another,² which has since matured into a patent.³

Appellants’ patent, like the instant application, also relates to metalliferous azo■dyestuffs prepared by treating certain monoazodyestuffs with an agent yielding ■cobalt or chromium under such conditions that a metalliferous dyestuff, which contains substantially two dyestuff molecules complexed per atom of the metal, is obtained. Claim 2 is representative of ■appellants’ patented subject matter:⁴

“2. A complex chromium compound containing one atom of chromium bound in complex union with substantially two monoazo dyestuff molecules free from sulfonic acid and carboxylic acid groups corresponding to the formula. wherein Ri, R2 and R3 each represent •a benzene radical, at least one of which contains a member of the .group consisting of a methyl group, a nitro group, a methoxy group and a chlorine atom and Ri is bound to ihe azo linkage in ortho position relatively to the hydroxy group.”

The examiner rejected the claim “as lacking invention over the claims of Zickendraht et al.” He was of the opinion the claimed compounds are the next lower homologues of the patented compounds, and since they did not patentably distinguish therefrom, allowance of “the instant claim would amount to double patenting.”

In affirming the examiner, the board said:

“ * * * It is fundamental that only one patent may be granted for a single invention hence, in order to make out a case for the grant of another patent, the claim under consideration must show an invention over the claims of the first patent. * * *

* * * •» * *

“In the instant case the only difference is that in the patent ^claims there is a substituent on one of the benzene rings while in the application there is not. It has not been shown that this difference has any effect on the dyeing characteristics of the compound. In fact, as pointed out by the Examiner, both dyes are soluble in water. It is therefore difficult to see wherein the statement in the patent that the substituent is one not imparting solubility in water is of any material significance. From the pure chemistry standpoint the variation is a common and obvious one. We find no basis for concluding that two inventions are involved.”⁵ (Italics supplied).

The sole issue is whether the instant claim defines a patently distinct invention over that claimed in applicants’ patent. The doctrine is well established that claims in different applications need be more than merely different in form or content; and that a patentable distinction must exist to entitle applicants to a second patent. In re Ockert, 245 F.2d 467, 44 CCPA 1024; In re Korpi, et al., 160 F.2d 564, 34 CCPA 956; In re Copeman, 135 F.2d 349, 30 CCPA 962; 57 USPQ 312.

There are two distinctions between the instant claim and those in appellants' patent. One is that in the appealed claim the sulfonamide group (-S02NH2) is located para to the azo group, while in the patented claims its location is either unrestricted, or located meta to the azo group. The second is that in the patented claims at least one of the benzene rings must be substituted with a methyl, nitro, methoxy or chlorine group, while in the appealed claim the benzene rings contain no such substituents.

Appellants contend that those two distinctions constitute different inventive concepts. We fail to see why or how those differences can be considered patentable distinctions. They appear to us, as to the examiner and the board, to be merely a description of the factual differences, readily observable by one of ordinary skill in this field. Appellants have failed to show any conceptual difference, or to show that the differences are in any way material. With respect to the position of the sulfonamide group, the patented claims are generic, thus the group may be on any position. The patent disclosure, to which we may refer to understand the scope of the claims, In re Greenlee, 222 F.2d 739, 42 CCPA 926; In re Ward, 150 F.2d 436, 32 CCPA 1238, shows several azo dyes having the sulfonamide group located para to the azo group. Hence, the location of that group cannot represent a different inventive concept, nor a patentable distinction.

With regard to the second difference, i. e. substitution of the benzene rings, it was the examiner’s position that the claimed compounds represent the next lower homologue of the patented compounds. We need not decide whether the compounds are properly labeled homologues. The name used to designate the structural relationship between related chemical compounds is not necessarily controlling; rather it is the closeness of that relationship, a question of fact, which is indicative of the obviousness or unobviousness of the new compound. In re Druey et al., 319 F.2d 237, 50 CCPA -; In re Herr, 304 F.2d 904, 50 CCPA -. Here the difference between the claimed compound and one of the patented compounds is merely the presence or absence of a methyl group on one of the benzene rings in a complex molecule. Appellants urge that the patent stresses that the diazo and coupling components must be selected to insure the production of an azo dye having at least one of the named substituents on the benzene rings, and that such substituents do not impart solubility in water to the dye. They urge also that according to the instant specification “no further substituent is necessary as in the case of the patent.” (Italics supplied). The examiner, in commenting on that difference stated:

“ * * * both the patented and presently claimed metal complexes are water-soluble. Only a difference in degree is involved insofar as water solubility is concerned. * * * ”

We note that applicants’ patent discloses both components of the dye, each of which may contain benzene rings without any substituents thereon. It seems to us that the patent disclosure would suggest to one skilled in the art reacting any of the diazo components in column I of the patent with any of the coupling components in column II, since the same basic coupling reaction is involved in each case. Appropriate selection of the diazo component and the coupling component therefrom should result in production of the dye claimed herein. In view of the fact that appellants have failed to explain why the presence or absence of substituents on the benzene ring is of any material significance, and have failed to offer any proof to substantiate their allegation that two different inventive concepts are involved, it appears to us, as it did to the examiner and the board, that there is but one patentable invention here to which both the patented and appealed claims are directed.

Appellants contend also that if the instant application and the patent had been filed by different inventors, no interference could be possible, since the claims and disclosures are mutually exclusive. Double patenting may exist even where, as here, the claims in two cases are not mutually cross-readable. In re Ockert; In re Ward et al., 236 F.2d 428, 43 CCPA 1007.

Appellants’ reference in their brief to the terminal disclaimer provisions of 35 U.S.C. § 253 is noted. We do not find, however, that question to have been raised below, thus we cannot consider it here.

The decision is affirmed.

Affirmed.

MARTIN, Judge, concurs in result only.

1 . Serial No. 427,362, filed May 3, 1954.

2 . Serial No. 427,361, filed May 3, 1954.

3 . U.S. Patent No. 2,784,178, issued March 5, 1957, to Christian Zickendraht and Arthur Buehler.

4 . Ibid.

5 . On reconsideration, the board referred to 35 U.S.C. § 103 for the purpose of showing that an obvious variation does not constitute a patentable distinction. In view thereof, appellants allege confusion whether the rejection is based on double patenting or obviousness. We are satisfied the only ground of rejection is the former.