DECISSION OF THE COMMISSIONER
STATUTORY - S.2(d): Vaccine for Immunization of Animals.
NO AGGREGATION: Mixture of Vaccine Viruses Unobvious.
Processes and products in the microbiological field are not
excluded under Section 2(d), vide CD. 125. The specified
mixture of virus ingredients produce a new result which was
the result of inventive experimentation.
FINAL ACTION: Reversed.
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This decision deals with a request for review by the
Commissioner of Patents of the Examiner's Final Action dated
October 28, 1971 on application 879,884. This application
was filed in the name of Kurt Drager et al and refers to
"Polyvalent Canine Vaccine Preparation".
In the prosecution ~terminated by the Final Action the
examiner refused the claims as being directed to an aggregation,
and that the claims refer to modified living matter which do
not represent a patentable invention according to Section 2(d)
of the Patent Act.
At the outset it is made clear that the examiner was
following office policy with respect to living matter at the
time the Final Action was written. However, this rejection
is withdrawn in view of a change in policy as set out in a
recent Commissioner's Decision which held that processes and
the products thereof in the microbiological field are not
excluded from patentability under Section 2(d) of the Patent
Act provided the prerequisites of novelty, unobviousness and,
more particularly, utility are satisfied.
With respect to the first refection "... the claims are
directed to an aggregation", the applicant stated in part:
(action of February 5, 1971)
The Examiner has also rejected the claims 1 and 2
directed to vaccines because he regards them as being
directed to an unpatentable aggregation. Applicants
consider that the Examiner is completely incorrect
in alleging that "It is expected skill to produce a
vaccine that has the effect in a single treatment
of what previously required several treatments".
Hence applicants are in a position to show that the
vaccines prepared according to this invention do
not show a simple additive effect of their
components and are even superior to other combined
vaccines of the same type which were known prior
to the convention date of this application.
Applicants are enclosing a copy of an affidavit which
Was filed in the corresponding United States Appli-
cation in which it is shown that the use of a live
apathogenic tissue culture distemper virus component
in a divalent vaccine according to the present
invention results in a significantly higher hepatitis
antibody count than that produced by a vaccine
prepared according to what was known before the
date of this invention. There can be no question
that this is a surprising and unexpected result
which could not be foreseen by any one skilled in
the art prior to the making of the present invention.
It is believed therefore that the Examiner's
allegations that the vaccine claims 1 and 2 present
in this application directed to an unpatentable
aggregation are completely untenable.
This application refers to a Polyvalent Canine Vaccine
and the process for manufacture. Claim 1 reads as follows:
A vaccine for the simultaneous immunization of dogs
and foxes against distemper, hepatitis contagiosa
canis and leptospirosis (Stuttgart disease and Weil's.
disease) consisting of a lyophilized mixture of
inactivated hepatitis contagiosa canis viruses,
modified distemper viruses and destroyed leptospira
canicola cultures and destroyed leptospira icterohae-
morrhagiae cultures.
Having considered the subject matter of the application
the Board is satisfied that claims 1 and 2 are not directed
to a mere mixture of four viruses for each virus is present
in a particular form, and agrees that the applicant is not
claiming any haphazard mixture of four known viruses. Among
a variety of possible mixtures he selected a particular one
containing an inactivated hepatitis virus, a modified
(attenuated) distemper virus and two destroyed leptospira
cultures. This mixture is further subjected to lyophilization
to improve its stability and storability (see page 1, lines
18 to 22). The selected mixture could not have been inferred
from the known properties of the four single viruses. It
appears obvious that this selection is the result of an
extensive experimentation which finally narrowed down the
content of the composition to the specific mixture presently
claimed. It is sufficient to read the experimental data
given on pages 2 to 9 to realise the complexity of the problem
solved by the applicant.
As noted in the above mentioned affidavit, the vaccine,
according to the present invention, gives significantly better
results than any vaccine prepared according to what was known
before the date of this invention, therefore, any vaccine which
gives a new and better result cannot be considered as an
aggregation.
Also, in a resent decision, Burton Parsons v. Hewlett-
Packard (1972) T-390-7, the Federal Court held that a mixture
of prior art ingredients is patentable if it produces a new
result. Based on the evidence before it, the Board is
satisfied that a new result is produced by the mixture under
consideration, and that there was sufficient ingenuity in so
doing to satisfy the Commissioner that the application should
proceed to grant.
Consequently, the Board recommends the Final Action be
withdrawn.
R.E. Thomas,
Chairman, Patent Appeal Board.
I concur with the finding of the Patent Appeal Board
and withdraw the Final Action and return the application to
the examiner for resumption of prosecution.
Decision accordingly,
A. M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario,
this 24 day of October, 1972.
Messrs. Fetherstonhaugh & Co.