In Re Papesch

315 F.2d 381 (1963)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

The specification, which is brief and occupies less than three pages of the printed record, states: The trialkyl compounds of this invention have been found to possess unexpectedly potent anti-inflammatory activity in contrast to the related trimethyl compound. The instant compounds are also diuretic agents. The examiner rejected the claims. Claims 1-3 are rejected as being unpatentable because the ethyl and n-butyl side chains depicted in applicant's claims 2 and 3 are obvious homologs of the methyl groups shown in identical positions in the reference compound and the method of preparation is substantially the same. The examiner held that the obvious compound is not made less obvious by its properties in an art use. The examiner stated that it appears that if an invention is present, it resides in the use of the claimed compounds as anti-inflammatory agents and should be claimed as such. Therefore, it is held that the subject matter of the claim is obvious in view of the reference and unpatentable thereover. On appeal to the Board P responded by filing the affidavit of Dr. Francis J. Saunders (Ph. D. 1937), physiologist and a member, since 1938, of the Biology Division of G. D. Searle & Co., owner of the application at bar. Dr. Saunders has been in charge of Searle's endocrinological and related physiological research. The affidavit reports comparative tests of the Robins et al. trimethyl compound and appellant's triethyl compound which show that the latter is an active anti-inflammatory agent while the prior art compound is completely inactive in that respect. The Patent Office has accepted the factual conclusions of the affiant based on them. The claims were again rejected only on the ground that they are unpatentable over a single reference which discloses what is conceded to be a lower homolog of the claimed compounds. The Board ignored the unexpected results from the compounds. P appealed.