Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE DAVIDE DELLA BELLA AND DARIO CHIARINO
Appeal No. 543-15
June 18, 1984, and September 28, 1984
Heard: March 12, 1984
Application for Patent filed August 22, 1980, Serial No. 180,422, a Division of Serial No. 104,740, filed December 18, 1979, Patent No. 4,276,299. Isoxazole Derivative, Preparation Thereof, And Pharmaceutical Compositions Containing The Same.
Ellsworth H. Mosher et al. for appellants
Primary Examiner--Natalie Trousof
Examiner--Anton H. Sutto
Before Serota, Sturtevant, Blech, Seidleck and Steiner
Examiners-in-Chief
Blech
Examiner-in-Chief
This is an appeal from the final rejection of claim 10. Claim 6 stands allowed. Claims 4, 5 and 7, all the other claims remaining in the case, stand withdrawn as not reading on the elected species (37 CFR 1.142(b)).
The appealed claim is:
10. A compound having the formula:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R is selected from the group consisting of ??Missing Text?? , and X is selected from the group consisting of hydrogen and bromine.
The relationship to each other of the compounds of the Markush group of the claim above set forth is that they are sequential intermediates. In other words they are used seriately to make the last compound depicted below, defined by claim 2 of appellants' US Patent No. 4,276,299, granted June 30, 1981, maturing out of the parent application of the instant case, by the following reaction scheme:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The Examiner rejects the appealed claim as containing an improper Markush group, quite evidently based on the judicial doctrine sanctioned by In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980). It is his position that the Markush group defining R is improper inasmuch as sequential intermediates are characterized thereby which assertedly do not have the same utility.
We will not sustain the rejection. Harnisch sets forth two criteria which, on a case by case basis, must be considered in the evaluation of the propriety of a Markush group. They are (1) structural similarity, and (2) 'unity of invention.' If these criteria are met, then the Markush group is proper even if it involves and embraces intermediates of each other.
Applying these test criteria to the facts of this case, there can be no doubt that the Markush group members are structurally similar. They all, basically, are 3-bromo-isoxazol-5-yl derivatives differing amongst each other only in the nature of the 5-substituent. Quite evidently, thus, they all belong to a recognized genus of structurally related materials having a community of physical and chemical properties. Consequently, test (1) is met.
As to test (2), in order to determine whether or not 'unity of invention' exists it is appropriate to look to In re Magerlein, 602 F.2d 366, 202 USPQ 473 (CCPA 1979), to ascertain the necessary relationship required thereof in intermediate-final products situations. As is apparent from Magerlein, note, in particular footnote 16 thereof, there is unity of invention when the structure of the intermediate is the cause-effect of the property and usefulness of the final product. Accordingly, under the facts of this case also 'unity of invention' must be held inasmuch as the claimed intermediates all are disclosed only to be useful for the making of the same patented compound.
*2 Having met the two-pronged test of Harnisch it follows that the decision of the Examiner must be, and hereby is, reversed.
REVERSED
BOARD OF PATENT APPEALS AND INTERFERENCES
Saul I. Serota
Examiner-in-Chief
Brereton Sturtevant
Examiner-in-Chief
Samuel H. Blech
Examiner-in-Chief
James A. Seidleck
Examiner-in-Chief
Arthur J. Steiner
Application for Patent filed August 22, 1980, Serial No. 180,422, a Division of Serial No. 104,740, filed December 18, 1979, Patent No. 4,276,299. Isoxazole Derivative, Preparation Thereof, And Pharmaceutical Compositions Containing The Same
Ellsworth H. Mosher et al. for appellants.
Primary Examiner--Natalie Trousof
Examiner--Anton H. Sutto
Before Serota, Sturtevant, Blech, Seidleck and Steiner
Examiners-in-Chief
Blech
Examiner-in-Chief
ON REQUEST FOR RECONSIDERATION BY THE EXAMINER
September 28, 1984
*1 We recognize that a request for reconsideration by the director of Group 120, rather than by the Examiner himself, and routed to the Chairman of the Board of Appeals, rather than addressed directly to us, constitutes unorthodox practice, but such is not seen to be ground for our refusal to consider it. Appellants were not prejudiced thereby inasmuch as they were afforded full opportunity to express their view vis-a-vis the contentions raised in the request, they did so, and we fully considered their arguments. Of course, the fact that reconsideration was requested by the examining corps is by and in itself not contra to the Statute, as was decided in In re Schmidt et al, 54 CCPA 1577, 377 F.2d 639, 153 USPQ 640 (1967), particularly since we could also have raised the same points urged therein sue sponte.
The contentions made in this request do not convince us of any error in our holding. We only wish to correct language in our original decision which may be misconstrued. 'Unity of invention', as discussed by the court in Harnisch, encompasses both structural similarity and communality of properties and/or utility. Here, there appears to be no dispute that, structurally, the Markush group members are similar. Further, the fact that the group members are used seriately to make a patented product, in our view, is indicative of the same invention being involved, each member being a precursor of the other and leading to the making of a novel and useful material. Each of the individual members of the Markush group has no utility except in the chain of reaction leading to the patented product. As such, common utility is present within the meaning of the 'unity of invention' requirement set forth in Harnisch, the claimed intermediates being the cause effect of the property and usefulness of the final patented product under the rationale expounded in In re Magerlein, 602 F.2d 366, 202 USPQ 473, (CCPA 1979).
To the extent that our holding may be inconsistent with the judicial precedents set forth in this request, the latter clearly must be presumed to have been overruled by the more recent Harnisch decision.
The request is denied to the extent it seeks any modification of our original decision.
DENIED
BOARD OF APPEALS
Saul I. Serota
Examiner-in-Chief
Brereton Sturtevant
Examiner-in-Chief
Samuel H. Blech
James A. Seidleck
Examiner-in-Chief
Arthur J. Steiner
Examiner-in-Chief
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