COMMISSIONER'S DECISION
SECTION 36: Claims for Insecticides with Carriers.
An applicant who has invented and claims a new insecticide may not claim
the insecticide mixed with a carrier. (Cf. C.D. 296)
Rejection: Affirmed. This decision is the subject of an Appeal pending in
the Federal Court of Canada.
Patent Application 132,421, Dawes et al, (Class 260/313.3) was filed
on January 14, 1972, by Agripat S.S., a Swiss company connected with
Ciba-Geigy. Certain claims were rejected by the examiner under Rule 46
on December 10, 1974, followed by a request for review. As part of
that procedure, a hearing before the Patent Appeal Board took place on
January 27, 1975, at which the applicant was represented by Mr.Russell
Smart, Q.C., and Mr. R. Fuller. The issue to be resolved was whether the
applicant having invented a new chemical compound useful as an insecticide,
and which he has claimed as the invention, is also entitled to make claims
for that compound mixed with extenders, surfactants, and propellants.
The invention disclosed in the application is a triazolylphosphoric acid
ester, which possesses insecticidal properties. In claims 1 - 4 (which
were not rejected) Agripat covers the compound, a process for preparing it,
and a method of using it. In claims 5 - 11 (which were refused) they
claimed the compound in admixture with solid extenders,surfactants, or
aerosol propellants, and granules or pellets coated or impregnated with
the compound. A final claim 12, which was for the compound in a container
together with instructions for using it, was also rejected, but the
applicant has since withdrawn it and it need not be considered, Sub-
sequent to the rejection the applicant proposed certain amendments, which
were not accepted. Since the claims on file differ in no material
respects from the proposed claims (this view was accepted by Mr. Smart
at the hearing),we will limit our consideration to the claims which
are on file and which were rejected , vis 5-11. They are as follows:
5. A pesticidal composition which comprises (i) the compound
according to claim 1, in intimate admixture with at least one
of the following: (ii.) a solid extender; (iii) a surfactant;
or (iv) an aerosol propellant.
6. A solid composition according to claim 5 which comprises one
or both of (ii) and (iii.) .
7. A composition according to claim 6 in the form of a granulate
or pellets.
8. A composition according to claim 7 wherein the granules or
pellets are coated or impregnated with (i).
9. A liquid composition according to claim 5 which comprises one or
both of (iii) or (iv).
10. A composition according to claim 9 comprising (iii) and a hydro-
carbon which boils at a temperature above 130·C.
11.A composition according to claim 9 comprising, as (iv) a
polyhalogenated hydrocarbon.
The examiner refused these claims on the grounds that they did not properly
define the invention, relying on the findings in Gilbert v. Sandoz (1971)
64 C.P.R. 14, and 1974 S.C.R. 1336 (where it is styled as Gilbert v Gilcross).
In that decision it was stated that claims to a pharmaceutical compound associated
with a carrier:
... cannot stand in respect of any inventive step involved
in the mixture of a substance with a carrier, since there
is no invention involved in such step. (quoted from the de-
cision of the Exchequer Court at p. 35, and adopted by the
Supreme Court at p. 1339.)
It was the examiner's view that when the invention is a new chemical compound
which is claimed as the invention, claims to the compound associated with
carriers and diluents are not patentable, since the inventive concept resides
in the compound itself. He stated that:
... the inventive matter resides in the products themselves,
which are already claimed, there being no further invention
in the mixture of the compounds with a solid extender and/or
a surfactant and/or an aerosol propellant. The addition of
these carriers and/or additives is merely to obtain a suitable
method for application. There is no interaction between the
compound (s) of the invention and these carriers and/or
additives and certainly no new and unexpected result in itself is
obtained. Claims 5 to 11 are accordingly rejected.
It is the applicant's position that all the claims should be permitted as
they relate to different aspects of the same invention, and that the rejected
claims cover a commercial embodiment of the invention. He argued that there
is no undue multiplicity of claims such as would contravene Rule 43, and
that being so the findings in such jurisprudence as Baldwin International
v Western Electric 1934 S.C.R. 94 and Hercules v Diamond-Shamrock 1970
Ex. C.R. 574 confirm his contention that he is entitled to such claims. Claims
5 - 11, he says, are for the invention in the form that it is most likely to
be sold to the public, and therefore are the preferred embodiment of the same
invention as appears in claims 1 - 4.
At the hearing, Mr. Smart developed the argument that claims 5 - 11 are needed
in the event that it should be discovered after grant that the compound of
claim 1 is old, - perhaps disclosed as a chemical curiosity in some obscure
publication, without any reference to its insecticidal properties. In that
event, he contends, claim 5 would afford protection for the applicant's
discovery. To quote from his response of Sept. 25, 1974, p. 4:
An applicant can never be sure that his compounds are novel
or unobvious. Thus he can never be 100% certain that there is no
remote publication, possibly in an obscure foreign language, dis-
closing one or more of the compounds embraced by his product
claims. Such a publication could for example merely disclose one of
his products as a chemical curiosity, with no suggestion of the
suitability of the product for the purpose now claimed.
Hence before applying for a patent for an invention applicants
try to ensure by thorough searches that the subject matter for which
patent protection is sought is new but there always remains an un-
certainty. This is due to the enormous growth of technical knowledge
during past decades which reflects itself in numerous periodicals
and monographics. Applicants believe that everybody who deals with
research in scientific and especially in chemical literature is
aware of the difficulties involved in comprehending and searching
all existing and ever expanding publications. Great difficulties
arise in this connection from the fact that chemical abstracts
services in general tend to report only compounds which are identified
by their structures and their physical properties, A mere list of
names of chemical compounds is not sufficient for a report of
"Chemical Abstracts" for example. However on the other hand compounds
from such a list would form a bar against the novelty of a chemical
invention. Thus from a technical point of view it is impossible for
anybody to search chemical literature is such a way that he can be
100% confident that he has taken into consideration all available
information existing anywhere. (underlining added)
The applicant differentiates his position from what occurred in Gilbert v
Sandoz (supra) in several ways. He says (response of Sept. 25, 1974, p.3):
As the Sandoz decision relates to medicines, which along with
foods are given special treatment in the Patent Act, any exten-
tion to other types of invention should be approached with extreme
caution. Furthermore it should be quite clear that the Sandoz
vs Gilcross decision cannot be given a meaning which makes
nonsense of various sections of the Patent Act. Thus it follows
that to cite the decision as an authority for rejecting one claim
in an application because it is not inventive over another is
clearly wrong as such an interpretation conflicts with the
provisions of Sections 36 and 38 of the Patent Act.
He has stated that the Gilbert decison derives from findings in Rohm & Haas
v Commissioner of Patents 30 C.P.R. 113; 1959 Ex. C.R. 133 and Commissioner of
Patents v Farbwerke Hoechst 1964 S.C.R. 49; 41 CPR,which he says stand for
the proposition that an applicant cannot get a second patent for composition
claims, but is not precluded from claiming them in an original application
together with claims to the compound. His has further submitted that:
In Sandoz v. Gilcross the two claims at bar were in process
dependent form, prima facie satisfying Section 41(1); hence if
the earlier process claims had fallen, these claims had to fall
too, as Section 41(1) could not then be satisfied (see, inter
alia C.H, Boehringer Sohn v. Bell Craig, 25 Fox P.C. 36, Sup. Ct.)
We think it would also be useful to refer to two other arguments of the applic-
ant, viz:
The claims give in a few words a summary of the heart of the
invention. If as in the present case the compound per se, the
compositions and the method of use claims are merely three aspects
of the same invention the presence of this latter type claims
will obviously help the public to clearly see which use is
especially protected. It will also facilitate documentation as well
as research if it is clearly apparent that not only the compound
but also the compositions and its method of use are protected.
and
Before leaving the subject of the composition claims completely,
applicants would like to observe that it also appears to he
illogical to permit an applicant to claim a composition where
the active ingredient is old but deny the same right to an
applicant where the active ingredient is novel.
We accept the proposition that an applicant is entitled to claims of varying
scope to define the invention. The Hercules v Diamond Shamrock (supra)
and Baldwin International v Western Electric (1934 S.C.R. 94) decisions stand
for that proposition. This is so that if it should be found that the inventor
has claimed the invention too broadly, his narrow claims will remain to
provide protection for the narrower scope of the same invention to which he
is properly entitled. That is not, however, the same as saying he is entitled
to claims for subject matter which can later be put forward as covering a
different invention should the main claims fall. Claims must define the in-
vention itself, and not go beyond it. Section 36(2) of the Patent Act is
statutory authority for that statement. It requires that the inventor
distinctly claim the part which is the invention. What we must decide is how
far an applicant may go in achieving the goal of protecting his invention
fully without overstepping the limits of the invention by claiming what is
not rightfully his. For to paraphrase what was said by the Supreme Court
in B.V.D. v Can. Celanese (1937) S.C.R. 221 at 237, if the claims in fact go
beyond the invention, the patent is invalid. In the B.V.D. case (which was
confirmed by the Privy Council (56 R.P.C. 122), the court was of course considering
claims which encompassed anticipatory matter, and caution must be exercised
in adopting the broad reasoning adopted under those circumstances to another
situation.
In Bergeon v. DeKermor Electric, 1927 Ex. C.R. 181, at 187, Mr. Justice
Audette came close to this matter when he said:
A man cannot introduce some variations or improvements,
whether patentable or not, into a known apparatus or
machine and then claim as his invention the whole apparatus.
He also quoted with approval the following passage from Nicholas on Patent
Law:
When the invention is for an improvement (as in this case)
the patentee must be careful to claim only the improvement
and to state clearly and distinctly of what the improvement
consists. He cannot take a well known existing machine,
and, having made some small improvements, place that before
the public and say: "I have made a better machine. There
is the sewing machine of so and so; I have improved upon
that; that is mine, it is a much better machine than his."
He must distinctly state what is, and lay claim only to his
improvement. (underlining added)
When we turn to the case before us, we find that mixtures of insecticides
with carriers are well known. The applicant has replaced the old insecticides
with a different one, one patentable in its own right. An argument might well
be advanced that his claim should be limited to that "improvement" over
the prior art.
We have also had reference to Dick v. Ellam's Duplicator Company (1900)
17 R.P.C. 196 at 202, where we find:
... I do think there is something in the invention, and
that the invention might have been patentable if the Patentee
had not thrown his net too wide as Patentees constantly do,
to catch people who do not infringe the real invention.
In American patent law this type of objection has been referred to as one
based on old or exhausted combinations. Reference may be made to paragraph
706.03(j) of. the U.S, Manual of Patent Examining Procedure, and there is
a considerable body of American patent law holding that when an applicant has
improved one element of a combination which may be per se patentable, he
is not entitled to claim the improvement in combination with old elements
when the elements perform no new function in the claimed combination.
The Canadian Courts have been confronted with a similar issue to that
now before us in at least three instances where applicants wished to claim
substances mixed with carriers. In Rohm & Haas v. Commissioner of Patents
1959 Ex. C.R. 133, the invention was for fungicidal compositions. Not all the
composition claims had been refused, and the principle ground for rejecting
those that were rejected was Section 35(2), now 36(2), of the Patent Act.
However, Mr. Justice Cameron added the following comment (p. 163):
I am of the opinion however, that where a claim to a
compound has been allowed, a claim to a fungicidal com-
position merely having that compound as an active in-
gredient is not patentable.
In Rohm & Hans the claims to the compound had already been granted in another
patent for a divisional application, though the extract just quoted makes no
distinction of that nature, and indicates no limitation to such situations.
In Commissioner of Patents v. Farbwerke Hoechst, 1964, S.C.R. 49, the Commission-
er rejected certain claims to a medicinal compound mixed with a carrier. The
applicant had filed nine other applications for the medicine when made by nine
different processes. In reversing the Exchequer Court, the Supreme
Court made the following comments at p. 53:
The fallacy in the reasoning (of the lover court) is in
the finding of novelty and inventive ingenuity in this pro-
cedure of dilution. It is an uwarrantable extension of
the ratio in the Commissioner of Pantents v. Ciba, where
inventive ingenuity was found in the discovery of the valu-
able properties of the drug itself.
A person is entitled to a patent ~ r a new, useful and
inventive medicinal substance but ~o dilute that new sub-
stance one its medical uses are established does not result
in further invention. The diluted and undiluted
substance are but two aspects of exactly the same invention.
In this case, the addition of an inert carrier which is a common
expedient to increase bulk, and so facilitate measurement
and administration, is nothing more than dilution and does
not result in a further invention over and above that of
the medicinal itself. If a patent subsists for the new
medicinal substance, a separate patent cannot subsist for
that substance merely diluted.
These tvo decisions do make it reasonably clear that a second patent may
not ordinarily be granted to a substance mixed with a carrier when the patentee
has already been granted another patent for the substance alone (unless, perhaps.
some additional invention results from mixing it with the carrier),
Less certain is whether the same objection arises if the two sets of claims are
in the same patent or application. The broad statements in the decisions
suggest it does, but the circumstances surrounding the cases, and the inclusion
of references to "separate patents" elsewhere in the texts, leave some doubt
on this point.
That it was meant to have broader application and apply to claims in the same
patent might be taken from Gilbert. v. Sandoz (1971) (supra) . Here the patent
included claims for a pharmaceutical compound and claims for that compound
"associated with a pharmaceutically acceptable, nontoxic carrier". In dis-
cussing the latter claims the Exchequer Court held them invalid (at p.35)
for the following reason:
...since no invention of pharmaceutical composition was
made, as distinct from the invention of thioridazine
itself. which is fully claimed in claims 1 to 9, there is
no basis for the presence in the patent of claims 10 and
11.
These last mentioned claims, as I see it, cannot stand as
claims in respect of any inventive step involved in the
mixing of a substance with a carrier since these is no
invention in such a step. (Vide Commissioner of Patents v.
Farbwerke Hoechst, 41 C.P.R. 9, 1964 S.C.R. 49).
In affirming, the Supreme Court (at p. 1339) quoted the preceding paragraph
and added:
I agree with the conclusion of the learned trial judge and
this makes it unnecessary to consider the further reasons
he advanced.
From the comments of the Canadian Courts it is reasonable to conclude
that their objection to the carrier claims is founded upon the view that
they go beyond the invention, and that they do not distinctly claim the in-
vention. In other words, that they cover an exhausted combination.
We should, however, explore the issue further. We have already referred to the
Hercules Inc. v Diamond Shamrock case above. In it the President of the
Exchequer Court considered the role of claims in patents beginning at p. 584.
He pointed to the statutory right expressed in Section 36(2) of applicants to make
claims (in the plural) for different aspects of the invention, and more particularly
to his right to claim both a process and a substance in the seme patent, lie referred to
Section 41 as verifying this conclusion (Section 60 might also have been men-
tioned). La~~r, at page 598, when describing what occurs in claiming Mr. Jackett
said:
.... in the first instance, a claim is made in the widest terms
possible for the subject matter described in the specification, and
then, by what seems to be an infinite variety of changes in the
terms of the first claim, the inventor makes additional claims by
which the invention is variously described by adding additional
limiting factors not included in the initial claim. If the first
claim is not attached, no resort need be made to the other claims.
If, on the other hand, a Court finds the first claim invalid
because, for example, it does not Show the application of inventive
ingenuity, an attempt can be made, nevertheless, to support one
or more of the other claims on the ground that the additional
factors tacked on in them have resulted in a description of a
real invention.
From the reasons for judgement in Societe Rhune-Poulene v Jules Gilbert 1966
Ex. C.R. 59 at 62-3 and 1967 S.C.R. 150, in Libby-Owens-Ford Glass v Ford motor
Co. 1970 S.C.R. 833 at 841, and in Auer Incandescent Light v O'Brien (1987)
5 Ex. C.R. 243 at 286-288 it is also clear that patentees are entitled to a
variety of claims for their invention. For example, process claims and claims
to substances, or process and apparatus claims may define different aspects
of the same invention. To quote from the Libby-Owens-Ford decision, supra,
at p. 841:
The established practice of the Patent Office of allowing
both apparatus and process claims or process and substance
claims in a single patent indicates that process claims are
apt to be considered, in a proper case, as being different
aspects of a single invention covering either an apparatus
or a substance. (underlining added).
The issue, then, is not whether the applicant is entitled to a variety of claims
(he is), nor that the rejected claims are narrower than the allowed claims
(they are). The issue is how far the applicant may go in claiming his invention,
and whether the refused claims properly define the invention.
We do not perceive the same dangers in a "chemical curiosity" endangering the
applican's rights as he does. The requirements a prior disclosure must
satisfy before it can he said to anticipate an invention are strict, and if no
utility had been shown for a chemical compound referred to in an "obscure"
reference, we question if. it would invalidate -subsequent claims to that
compound. In Scragg v Leesona 1964 Ex. C.R. 649 at 725, for example, we find:
It is established that a prior publication must not be held
to be anticipatory of an invention in issue in an action for
infrigement or impeachment of a patent unless the conditions
specified in the leading cases are clearly shown to be
present in it. The basic tests may be stated briefly. The
information as to the invention in issue given by the prior
publication must, for the purposes of practical utility, be
equal to that given by the patent for the invention and show
everything that is essential to it so that a workman of
ordinary skill in the relevant art would at once have perceived,
understood and been able practically to apply the invention without
the neccessity of further experiment. It is not enough to prove
that the information could have been used to produce the result
of the invention in issue; there must have been a clear and unmistakable
direction to use it for such purpose. Nor is it sufficient that the
prior publication contained suggestions which, taken with other
suggestions, might be shown to have foreshadoved the invention in
issue or important steps in it, or that it contained the nucleus
of the idea of the invention which could have been regarded as the
beginning of its development. If the prior publication is to be
regarded as a prior publication of the invention in issue it must
be shown that it published to the world the whole invention with
all the material necessary to instruct the public how to put it in
practice and that it so disclosed the invention to the public
that no person could subsequently claim it as his own. Put in
different terms, there is the test stated by Viscount Dunedin, in
delivering the judgment of the Judicial Committee of the Privy
Council in Pope Appliance Corporation v. Spanish River Pulp and
Paper Mills Ltd, that a prior publication is not to be regarded as
an anticipation of the invention in issue unless it can be shown
that a person grappling with the problem solved by the patent and having
no knosvledge of it but having the prior publication in his hand would
have said "That gives me that I wish". Nor can anticipation of
the invention in issue be proved by resort to alleged inventions that
were not put into practice or were inoperable.
Similarly, in Lovell v. Beatty (1966) 23 F.P.C. 112 at 137 to 140 Mr. Justice
Thorson, after referring to numerous Canadian and British decisions as authority,
confirmed the principle that before a prior publication can anticipate, it
must publish the "whole invention - i.e. all that is material to instruct the
public how to put the invention in practice." Or as it was expressed in
Gerrard Wire v Cary 1926 Ex. C.R. 170 at 178, utility is a requisite of in-
vention, and one inventor cannot predate another without that element being
present.
The applicant has pointed to Burton-Parsons v. Hewlett Pachard (1975)
17 C.P.R. (2d) 97, as a recent decision where the Supreme Court of Canada
held valid composition claims where all the parts of the claim were old. In
that case, however, there Has no invention in the separate parts, only on the
combination of those parts co-reacting to produce the desired result.
Having considered all the applicant's arguments, we are satisfied that
claims 5-11 are not allowable, and should be refused.
Gordon Asher,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board, and refuse claims
5-11 inclusive. The applicant has six months within which to delete the
latter claims, or to appeal this decision under the provisions of Section 44
of the Patent Act.
J.H.A. Gari‚py,
Commissioner of Patents.
Dated at Hull, Quebec
this 25th day of June, 1976