COMMISSIONER'S DECISION
ADEQUACY OF DISCLOSURE: SECTION 36 - Diaza-Cycloalkanes
The applicant claimed several methods to make new chemical compounds
useful medicinally. The examiner wished to restrict the applicant
to one method, holding that the others were not disclosed adequately.
It was decided that in the particular circumstances arising here
there was sufficient support.
Rejection: Reversed.
The final rejection of patent application 090755, class 260-263, filed
August 14, 1970, by Farbwerke Hoechst Aktiengesellschaft as assignee of
Robert Rippel et al, has been referred to the Patent Appeal board to
recommend what disposition should be made of the application. The title
of the invention is "2-(Thienyl-3'-amino)-1,3-Diaza-Cycloaklenes and
Process for Preparing Them." At the request of the applicant a Hearing
was held at which Miss M. Morency and Mr. David M. Rogers Q. C. represent-
ed the applicant.
In his final rejection, the examiner refused claim 1 under Section 36 of
the Patent Act on the grounds that the disclosure failed to provide adequate
support for all the subject matter covered by the claim. Section 41(1) was
also applied for the reason that some of the processes claimed mere not
"particularly described" in the application. The processes objected to
are those covered by parts c, d and e of claim 1, which reads as follows:
A process for preparing 2-(thienyl-3'-amino)-1,3-diazacycloalkenes
of the general formula
(See formula 1)
wherein R1, R2 and R3 represents hydrogen, low molecular weight, alkyl,
halogen, cyano or phenyl, or R2 and R3 may represent together a tri-
methylene or tetramethylene chain, and
Z represents a straight or branched alkylene radical having 2 - 4 C -atoms
of which 2 - 3 C-atoms are members of a ring,
in which
(a) a thienyl-3-isothiuronium salt, -thio-urea, -guanidine,
-nitroguanidine, or -cyanamide of the formula II
(See formula I)
wherein R1, R2 and R3 have the meanings given above, and
R represents the group
(See formula II)
or -CN (e) ,
wherein R5 represents low molecular weight alkyl and X rep-
resents an acid anion, is reacted with an alkylene-diamine of
the formula III
H2N-Z-NH2 III
wherein Z has the meaning given above, or a mono salt thereof,
(b) an N-(3'-thienyl)-N' -aminoalkyl-thio urea of the formula IV
(See formula IV)
wherein R1, R2, R3 and Z have the meanings given above, and A
represents oxygen or sulfur, is cyclicized,
(c) an aminothiophen of the formula V
(See formula V)
wherein R1, R2 and R3 have the meanings given above, is reacted
with a 2-alkylmercapto-1, 3-diazacycloalkene of the formula VI
(See formula VI)
wherein R5 and Z have the meanings given above, or a salt thereof.
(d) an aminothiophen of the formula V is reacted with a bis-(2-oxo-1,
3-diaza-cycloalkyl)-phosphrine chloride of the formula VII
(See formula VII)
wherein Z has the meaning given above, or
(e) a thiophen-3-isocyanide-dihalide of the formula VIII
(See formula VIII)
wherein R1. R2 and R3 have the meanings given above, and Hal
stands for chlorine or bromine, is reacted with an alkylene-
diamine of the formula III.
Although the preamble to the claim implies one process is claimed, in fact
there are many different processes to make certain diazacycloalkenes.
These alkenes possess hypotensive properties which are useful medicinally, so
that Section 41 is applicable to them. In the disclosure some examples are
provided of processes (a) and (b), but not for processes (c), (d) and (e).
In the final rejection, the examiner stated his objections in the following
terms:
The rejection of variations c, d and e in claim 1 is maintained
and the reason for such rejection is lack of adequate support
from the disclosure; the disclosure fails to meet the require-
ments of Section 36(1) regarding variations c, d and e and is
inadequate to support claims, particularly under Section 41(1)
which is designed to limit the monopoly on drugs to their
relationship to processes "particularly described".
The disclosure does not contain the description of any particular
compound by any of the methods under rejection.
Referring to a paragraph of the last Office Action which was
apparently misunderstood: "Contrary to applicant's opinion, the
disclosure does not provide "the description necessary to enable one
skilled in the art to carry out said variations." The processes
are not properly speaking described."
The disclosure fails to indicate the particular way in which the re-
jected variations must be adapted to produce the desired result and
hence does not show their utility in the preparation of the claimed
compounds nor even their practicability in such preparation. The wide
temperature ranges mentioned as well as the broad list of solvents
do not constitute information but rather an absence of definite
information, and consequently the public is not put in possession
of anything which is not already in public possession.
A patent is not an invitation to experiment, and the disclosure, with
respect to the variations under rejection, is insufficient to exempt
the interested person from experimenting for the purpose of determining
the actual means of adapting the methods, and this without definite
guarantee of success.
The concept that a process derives patentability from the patent-
ability of its product is not an exemption from Section 36(1) and the
practice of allowing any suggested processes, if adopted, could render
Section 41(1) completely inoperative, through the simple expedient
of adjoining an exhaustive list of known methods as alternates to the
method employed in the original synthesis: Section 41(1) becomes dead
letter if a compound claim covers all methods,
In his response of November 28, 1974, one argument made by the applicant was
that:
All of the processes are conventional chemical reactions and derive
their patentability from the new and unobvious utility of the
products of the formula given above. This is in accordance with
the decision of the Supreme Court of Canada in Ciba v. The Commissioner
of Patents (1959) SCR 378.
As stated above, these reactions were considered to be conventional
chemical reactions prior to filing of the subject application.
Obviously, the same reactants had never previously been reacted with
one another since this would deny the novelty of the processes but
similar reactants had been so reacted.
Variation c is concerned with the reaction of a compound of the
formula V with a compound of the formula VI. This reaction is discussed
in the disclosure on page 6, second line from the bottom to page 7,
line 15. In this portion of the disclosure, instructions are given
concerning the various parameters of the process. In addition, the
preparation of the starting material of the formula VI is also
described on page 7.
He then referred to several publications which showed that reactions
analogous to processes c and d had been used earlier to make different com-
pounds than those claimed here. In discussing Section 36(1) he stated:
Applicant respectfully submits that the requirements of
Section 36(1) have been met in the subject application. The
invention resides in the novel compounds and their unexpected
utility in pharmaceutical preparations. This invention and
its use as contemplated by the inventors is correctly and fully
described in the application. According to Section 36, when
a process is involved, it is necessary to set forth clearly the
various steps in the process and this has been done for each
variation which may be used in the preparation of the novel
compounds of the invention. This has been done in such full,
clear, concise and exact terms as to enable any person skilled
in the art or science to which the invention appertains to use
the invention. In support of this statement, an affidavit of
Dr. Leopold Horner, a Professor of Chemistry at the University
of Mainz in Germany, is included.
From this affidavit you will note that Dr. Horner read the
disclosure of this application and, using process variations c,
d and e, prepared the compound of Example Ib, namely 2-
(4'-methylthienyl-3'-amino)-1,3-diazacyclopentene-(2). Dr. Horner's
note book records form part of his affidavit. You will also note
that it is Dr. Horner's belief that the disclosure is sufficient to
enable a skilled chemist to use variations c, d and a to produce
the novel compounds.
Applicant is unaware of any statutory requirement that examples
be included in support of a process claim. In Gilbert v. Sandoz 64
CPR 14, The Exchequer Court found a claim invalid since there was
no particular example in the disclosure directed to the particular
process claimed. However, the Supreme Court in reversing this stated
that:
"In my view, this cannot be of very great consequence seeing
that the "condensation" process is not claimed as new and it
is not denied that a competent chemist, using only general
knowledge available, could have successfully carried it out
without more information than is supplied in the general
description." (Sandoz v. Gilcross 8 CPR (2d) 216).
It should be noted that Mr. Justice Pigeon, who delivered the judgement
of the Supreme Court, considered the process to be "described" even
though it was not "exemplified".
This latter point is of considerable importance since the Examiner
has stated that the disclosure in this application is inadequate to
support the claims, particularly under Section 41(1) which is designed
to limit the monopoly on drugs to their relationship to processes
"particularly described". Applicant respectfully submits that
each of process variations c, d and e has been particularly des-
cribed and considers that the Supreme Court decision in Sandoz v.
Gilcross supports the submission.
In rebutting other objections of the examiner the applicant states:
It is applicant's contention that the disclosure does indicate tile
particular way in which variations c, d and e must be adapted to
produce the desired result. This position is substantiated by the
affidavit of Dr.Horner, the "person skilled in the art" to whom
a patent specification is addressed. It is submitted that an
example is unnecessary to show the utility of these processes or
their practicability and that there is no statutory requirement or
judicial decision which make exemplification necessary.
The Examiner has also stated that the wide temperature ranges mentioned
as well as the broad list of solvents do not constitute information
but rather an absence of definite information, and consequently the
public is not put in possession of anything which is not already in
public possession. Applicant has not at any time alleged that the
processes of variations c, d and e were new chemical processes but
merely processes which were conventional at the time of filing of the
subject application. These processes, however, had never before been
used to react the various reactants to produce the novel compounds of
the invention which have unexpected utility as pharmaceuticals. With
reference to the disclosure taken as a whole, the public is put in
possession of something which was not in public possession, namely the
knowledge of these compounds and their use.
and
The Examiner has stated that a patent is not an invitation to experiment
and the disclosure with respect to the variations under rejection is
insufficient to exempt the interested person from experimenting for
the purpose of determining the actual means of adopting the method and
this without the definite guaranty of success. Applicant submits that
the disclosure is sufficient to allow a person skilled in the art
to practise the invention and this is all that is required.
Mr. Justice Maclean in the BVD v. Canadian Celanese decision 1936 Ex CR 140
held that:
"Where a specification described an invention sufficiently
clearly to enable a reasonably skilled workman to make use of
it, even though some experiments are necessary, the patent will
be good so long as those experiments do not require any
exercise of the inventive faculty".
and
The Examiner has stated that the practice of allowing any
suggested processes, if adopted, could render Section 41(1)
completely inoperative through the simple expedient of joining
an exhaustive list of known methods as alternates to the
method employed in the original synthesis. Applicant has not
merely suggested processes but has, in fact, described
processes. The claims of the subject application do not,
in fact, describe all methods but five methods which have
been described in the disclosure in such a manner to enable
a person skilled in the art to practice the invention.
It is evident that a principal issue is whether the disclosure is
adequate to permit certain of the processes to be claimed. In this case
the core of the invention is the product, and it is from it that the
process claims must acquire their necessary element of inventive ingenuity.
As the applicant has put it: "All of the processes are conventional
chemical reactions and derive their patentability from the new and
unobvious utility of the products....He relies upon Ciba v.
Commissioner of Patents (1959) S.C.R. 378 for that proposition. While
he has implied that there are other methods for making the products
(response of November 28, 1974, p.7), claim 1 covers the practical
methods which would normally be employed to make them, and it is in effect a
claim for all known ways to produce them. It comes close to being a
claim for a process for making the new compounds by all known methods
by which they might be prepared. It would not block others from
making the products if they were to develop inventively new methods to
prepare them, but barring that contingency would control all useful routes
to the compounds. Whether Section 41 permits applicant to claim so broadly
is another issue which must be considered.
In discussing Section 36 (then Section 35) in RCA v Raytheon (1956-1960)
Ex. C.R. 98 at 109 the Exchequer Court indicates that the onus of disclosure
that the section places on an inventor is a heavy and exacting one.
It stated at p. 108:
It is a cardinal principal of patent law that an inventor may
not validly claim what he has not described. In the patent
law jargon it is said that the disclosure of the specification
must support the claims. If they do not, the claims are
invalid. Moreover, there is a statutory duty of disclosure
and description that must be complied with if a claim for an
invention is to stand....
It further indicated that:
The purpose underlying this requirement is that when the period
of monopoly has expired the public will be able, having only
the specification, to make the same successful use of the
invention as the inventor could at the time of his application
(p. 109).
It is a principle reiterated in Noranda Mines v Minerals Separation (1947)
Ex. C.R. 306 at 316; in French's Complex Ore v Electrolytic Zinc 1930
S.C.R. 462 at 470; in B.V.D. v Canadian Celanese 1936 Ex. C.R. 139 and
1937 S.C.R. 22; in Smith Incubator v Sealing 1937 S.C.R. 251; in Gilbert v
Sandoz (1971) 64 C.P.R. 7 at 42-45; and in Rh“ne-Poulenc & CIBA v Gilbert
1966 Ex. C.R. 59 & 1967 S.C.R. 45.
On an earlier occasion we considered the question of sufficiency of disclosure
when application 028123 came before the Board. Our findings there were pub-
lished in the Patent Office Record for November 11, 1975, beginning at
page X1. We think it would be useful here to reexamine one of the cases
referred to at that time.
In the Gilbert v Sandoz decision supra , at p. 52, the Exchequer Court found
a process claim invalid because:
... the requirement of S. 36(1) is that the applicant describe
his invention and its operation or use as contemplated by him.
The public and the reader are entitled to a description of the
invention which the inventor has made and to say that a group of
substituted phenothiazines may be made by a known type of
chemical reaction is, as I see it, to assert merely what is
already known as a general proposition rather than to say that he
has carried it out in a particular way using particular materials
and found that such is a practical method of producing an
unexpectedly useful new substance known as thioridazine.
The Supreme Court of Canada, however, (1974 S.C.R. 1336 at 1344) reversed
the lower court on this point, saying:
...In my view this cannot be of very great consequence
seeing that the "condensation" process is not claimed
as new and it is not denied that a competent chemist,
using only general knowledge available could have success-
fully carried it out without more information than is
supplied in the general description. Furthermore it is
not denied that the bromo-ethane process can be successfully
carried out using the procedures and reagents that are
described in Example I which illustrates the carrying out
of the process as applied to the chloro-ethane compound.
Thus, the only objection to the sufficiency of the
description of the means of carrying out the invention by the
bromo-ethane process is that the inventor did not say that one
could proceed as in Example 1 for the chloro-ethane process,
although any skilled chemist would know that this must be
expected in the absence of any mention of some anomaly in
the behaviour of the bromo-ethane compound in the reaction.
We also refer to the following passage in our earlier decision:
As was held in Riddel v. Patrick Harrison (1956-1960) Ex. C.R. 213
at 253, an inventor need not restrict his claims to what has
been "specifically described in the specification and illustrated
in the accompanying drawings," but within the breadth of his
invention, may claim it as broadly as it would normally be
construed by persons skilled in the art. For such reasons, we
do not consider that Section 36 prohibits the grant of claims
20-30.
In the case which is now before us the applicant has submitted an affidavit
of one Dr. Leopold Homer affirming that the disclosure is sufficient to
enable a skilled chemist to carry out variations (c), (d), & (e), and
copies of articles predating the filing of this application illustrating,
that the methods had been used to make other compounds. The issue has
certain similarities to that decided in Gilbert v Sandoz. We are consequently
persuaded that there is adequate disclosure of methods (c), (d) & (e),
and that the rejection based on Section 36 should not be maintained. We
are satisfied that those skilled in the art would be able to make the desired
compounds using any of the three methods without difficulty.
Turning to the second main branch of the examiner s objection, we must look
at subsection (1) of Section 41 of the Patent Act, It provides that:
In the case of inventions relating to substances prepared
or produced by chemical processes and intended for food or
medicine, the specification shall not include claims for
the substance itself, except when prepared or produced by the
methods or processes of manufacture particularly described
and claimed or by their obvious chemical equivalents.
(underlining added)
It is the examiners view that this provision would be rendered "completely in
operative, through the simple expedient of adjoining an exhaustive list of
known methods as alternatives to the method employed in the original synthesis."
He considers the provision would become a dead letter if a compound claim
could cover all methods of making the compound.
We have already discussed the Gilbert v Sandoz case, in which, the invention,
it may be noted, has also governed by Section 41. In finding the process for
making the bromine derivatives valid, the Supreme Court implicitly determined
that the claim to it satisfied Section 41.
In Hoechst Pharmaceuticals v Gilbert (1965) 1. Ex. C.R. 710 and 1966 S.C.R. 189
both the Exchequer Court and the Supreme Court considered claims for several
processes to make new pharmaceuticals. The lower court made the following
observations:
(at p. 720)... There follow several pages of general description
of the methods - all of which were already well known to chemists
and of various starting materials of which it is stated that many
of them "suitable for use in the present process have been described in
the literature." Up to the end of this portion of the disclosure
there is accordingly nothing whatever to indicate a patentable
invention for there is nothing inventive in applying known methods to
known materials or kinds of materials even if no one has previously
applied the methods to the particular materials and even if the result
is a new product. To have a patentable invention the products in such
a case besides being new must be useful in the patent sense and only
if they are both new and useful can they and the process for producing
them be the subject of a patent. Vide Jenkins, J. in Re May & Baker
et al (65 RPC 255 at 281).
and at p. 726
....In the case of each patent the method of preparing the ureas re-
ferred to in claim 1 was not new and it is stated in the patent that
many of the starting materials were already known. It was moreover
admitted in the course of the trial that for the purposes of this
case it could be taken that all of them were known. In this situation
the principles stated by Jenkins, J. in Re May & Baker (supra) and
applied by the Supreme Court of Canada in Commissioner of Patents v. Ciba Ltd.
(1959 S.C.R. 378) appear to me to apply.
The court subsequently held the claims invalid for "preposterous" overclaiming
because it could not be said that "... all, or substantially all, members of
the class of sulphonyl areas defined in them possess some previously unknown
usefulness." (p. 731) But implicit in its findings is the proposition that
absent broad overclaiming,and if it would be a sound prediction that sub-
stantially all the members of the class possessed the required utility, then
the process claims would be valid. The Supreme Court put it this way (p.191):
It is conceded that tolbutamide, standing by itself, could
have been the subject matter of a valid patent if claimed as
such when prepared or produced by the methods or processes of
manufacture particularly described and claimed in the patent
or by their obvious chemical equivalent. (underlining added).
In the application we are considering, no objection has been made that the
breadth of the class of products produced by the processes is too great,
and that consideration does not arise.
It will also be useful to consider what was said in Boehringer Sohn v Bell
Craig 1962 Ex. C.R. 201, where the effect of the phrase "particularly
described and claimed" in Section 41, subsection (1) was weighed. At p. 235
we find:
When s. 41(1) applies... it requires that the claim to such substance
be limited to that substance when prepared or produced by the methods
or processes which have been (a) particularly described, and (b) claimed,
or (c) by the obvious chemical equivalents of the methods or processes
which have been particularly described and claimed.
Here, the only limitation expressed in claim 8 is contained in the
words "when produced by the process of claim 1, 2 or 3, or by an ob-
vious chemical equivalent". And when one turns to claim 1 to see what
process for preparing or producing 2-phenyl-3-methylmorpholine is
therein claimed, one finds that it is not a claim for a process for
the preparation of that substance but a claim for a process for the
preparation of an enormous class of substances of which this substance is
but one. In my view, claim 1 is not a claim for a process for the
production of 2-phenyl-3-methylmorpholine even though that substance is
one of the class, because it is clear that not all the members of the
class of starting materials can be used to make 2-phenyl-3-methylmorpholine and
claim 1 does not say that they can be used for that purpose, and at
the same time, claim 1 does not say what starting material or materials
may be used to make 2-phenyl-3-methylmorpholine. It thus does not
state distinctly or in explicit terms any process for the production
of that substance and we are back at the comment made earlier,
that claim 1 as expressed does not fit the invention of 2-phenyl-3-
methylmorpholine, but is a claim related solely to the alleged invention
of the process for production of the class of substances. In
Winthrop Chemical Co. Inc. v. Commissioner of Patents, the Supreme
Court held that "a claim cannot be entertained for a substance failing
within s-s. (1) of s. 41 unless a claim is also made in respect of
the process by which it is produced", vide Martland J. in Parke,
Davis & Co. v. Fine Chemicals of Canada, Ltd.; "A process implies
the application of a method to a
material or materials", per Martland J, in Commissioner of Patents
v. Ciba Ltd..
and at p. 237:
It was also urged in connection with the same submission that under
s. 41(1) the claim for 2-phenyl-3-methylmorpholine must be limited
not only to that substance when prepared by methods or processes which
have been particularly described, or their obvious chemical equivalents,
and that the claim to that substance in claim 8 is not limited to the
methods or processes which have been particularly described. This, in
my opinion, raises a second fatal objection to the validity of
claim 8. The only processes for the preparation of 2-phenyl-3-
methylmorpholine which, in my opinion, can be said to be particularly
described anywhere in the specification are those described in
examples 2 and 9. Example 2 describes a process for production of 2-
phenyl-3-methylmorpholine by dissolving B-phenyl-a-methyl-B,B1-
dihydroxydiethylamine-hydrochloride in concentrated sulphuric acid,
allowing it to stand overnight at room temperature, then making alkaline
and extracting. Example 9 describes a process by which the same diethanol-
amine hydrochloride is warmed with 10 per cent hydrochloric acid for
six hours in a water bath and the product then worked up "in the usual
manner".
The claim to 2-phenyl-3-methylmorpholine in claim 8 is not stated to
be limited to that substance when prepared or produced by these two
processes or by their obvious chemical equivalents. It is not even
stated to be limited to that substance when produced by the processes
which were described generally, earlier in the specification or their
obvious chemical equivalents, since the processes so described consist
only in (a)introducing a diethanolamine of the class without heating
into concentrated (96%) sulphuric acid; or (b) by treating it with
diluted acid at a moderate temperature. Thus, even if contrary to my
opinion, the general description of these processes could be regarded as
sufficiently particular to meet the requirements of the expression
"particularly described" in s.41(1), and, if also contrary to my opinion,
claim 1 does claim a process for the preparation or production of 2-phenyl-3-
methylmorpholine, claim 8 would still not comply with the subsection.
To limit the substance claim of claim 8 only by reference to the
substance when prepared by the process of claim 1, or an obvious chemical
equivalent, is to ignore the requirement of s. 41(1) that the claim be
limited as well to the substance "when prepared or produced by the
methods or processes of manufacture particularly described... or by their
obvious chemical equivalents". For, as previously pointed out, claim 1
is not limited as is the description to the use of concentrated sulphuric
acid at room temperature and to the use of dilute acid at moderate
temperatures, nor to the production of the morpholine ring closure by the
action of acid on the diethanolamine. Nor do I think that whatever is
embraced in claim 1 is necessarily embraced either within the processes
described in the specification, or their obvious chemical equivalents".
For, as previously pointed out, claim 1 is not limited as is the description
to the use of concentrated sulphuric acid at room temperature and to the use
of dilute acid at moderate temperatures, nor to the production of the mor-
pholine ring closure by the action of acid on the diethanolamine. Nor do
I think that whatever is embraced in claim 1 is necessarily embraced
either within the processes described in the specification, or their
obvious chemical equivalents. Claim 8 is thus broader than s.41(1)
permits and is accordingly invalid.
The Supreme Court affirmed (1963 S.C.R. 410) one of the reasons of the lower
court - without expressing an opinion on the others - by holding that the
process claim was too broad and therefore invalid, and that the product claim
dependent on it was invalid by virtue of that depending upon an invalid
process claim. From what it said in the Gilbert v Sandoz decision (supra),
however, we think it can be taken that every method claimed need not be illustrated
in full detail. However the "very process" by which a product is manufactured
must be claimed where Section 41 applies before the product may be claimed. As
the Supreme Court said in Boehringer (p.414):
... The subsection (41(1)) was intended to place strict limitations
upon claims for substances produced by chemical process intended for
food or medicine. Such a substance cannot be claimed by itself. It
can only be claimed when produced by a particular process of manufacture.
Not only that, the claimant must claim, not only the substance, but
that very process by which it is manufactured....(underlining added).
In our case each product claim is dependent on a process claim which produces
it. The issue of overclaiming has not been raised, and does not seem to be
present. And in any event, the claim which has been refused is a process
claim, not a product claim to which objections for failures in particularly
claiming would be more properly addressed.
In Soci‚t‚ Rh“ne-Poulenc v. Gilbert, 1967 S.C.R. 45, the Supreme Court did not
have any compunction about multiple methods being claimed where Section 41 is
involved, and the methods are all known. It said, at p. 48:
This s. 41(1) patent is for a substance produced by three methods
or processes. This is permitted by s. 41(1). Section 41(1) does
not make it necessary to have three separate applications for the
same substance, one by each process....
The patent was subsequently found invalid (1967, 35 F.P.C. 174 and 1968 S.C.R. 950)
for overclaiming, because the class of substances claimed was much too broad
for the invention made, and in the class of compounds claimed many were not
therapeutically useful. That, however, is not the objection made in the
rejection of this application. Thee Exchequer Court also found there was an
inadequate disclosure of the therapeutic use of the substances claimed, ar_
objection which conceivably might have been made, but the examiners implicit
acceptance of methods (a) & (b), and of product claims dependent thereon rules
out that consideration at this time,
In Boehringer Sohn v. Bell-Craig (1962) Ex. C.R. 201 and (1963) S,C.R. 410,
Martland J., in delivering the judgement of the Supreme Court, said of the
Section 41 at p. 414:
... The subsection was intended to place strict limitations upon
claims for substances produced by chemical process intended
for food or medicine. Such a substance cannot be claimed by
itself. It can only be claimed when produced by a particular
process of manufacture. Not only that, the claimant must claim,
not only the substance, but that very process by which it is
manufactured. To comply with the subsection he must, therefore,
make two claims. In my opinion this means that he must make
valid claim to both the process and the substance, if he is to be
entitled, successfully, to claim the latter. To interpret
the subsection as meaning that all that is necessary is to file a
claim for the process, valid or not, would be to defeat its purpose.
A person who claims a substance within the subsection, supported
only by a process claim which is invalid, is in no better position
than was the respondent in the Winthrop case (Commissioner of Patents
v. Winthrop Chemical 1948 S.C.R. 46). In the Winthrop case the
claimant had claimed too little. In the present case he has claimed
too much....
It is thus clear that there must be present a valid process claim. The
Court then proceeded in Boehringer to find the process claim invalid, not, it
should to noted, because the process was defined inadequately, but because it
was too broad, since it covered the production of a large number of compounds
which did not possess the utility ascribed to them. That particular objection
has not been made by the examiner in the present case, the scope of the
product claim is much more circumscribed, and, more important, the breadth
of what is claimed is supported by numerous examples of compounds within
the class possessing the desired utility, sufficient in number we believe,
to surmount the obstacle upon which Boehringer foundered. In this instance,
it is probable that "a substantial number of the conceivable substances
comprised within the class defined" (Boehringer, p. 413) have the utility
referred to in the specification.
If the applicant is not allowed to protect his invention by claiming such
obvious ways of making it as are disclosed "... some area is left open be-
tween what is the invention as disclosed and what is covered by the claims,
(and) the patent may be just as worthless as if it was invalid. Everybody
will be free to use the invention in the unfenced area." Burton Parsons
v Hewlett Packard, S.C.C., 17 C.P.R. (2d) 97 at 106) Later on the same page
the Court refused to approve an objection that the claims covered "every
practical embodiment," leaving it to the man skilled in the art to work out
the details.
In Boehringer Sohn v Bell Craig 1962 Ex. C.R. 201 at 235 (affd. 1963 S.C.R.410)
we also find that S. 41(1) requires that claims to "substances be limited to
that substance when prepared or produced by the methods or processes which
have been (a) particularly described, and (b) claimed, or (c) by the obvious
chemical equivalents of the methods or processes which have been particularly
described and claimed." (Emphasis added)
What we distil from these several cases relative to the matter now before
us is the following.
(1) A process claim is bad if it claims so broadly as to encompass
the production of inoperative species, or so broadly that it is
improbable that a substantial number of the substances made by it
do not possess the utility claimed for them. It cannot be speculative,
nor encompass large numbers of compounds which have never been prepared.
(2) Where Section 41 applies the applicant can only claim such methods
as are specifically described, or, provided they are specifically
referred to, one skilled in the art would readily appreciate how
to carry them out.
(3) A chemical compound governed by Section 41 can only be claimed
when made dependent upon a process claim which prepares it. If it
is dependent upon a broad process claim which is bad for over-claiming,
then it too is bad.
It is also important in our view, that it be clearly indicated in the
original disclosure that the process has been carried out and is operative.
A reference, to a "possible" process for preparing the products would
we think be speculation, and not meet that test. In this disclosure,
however, we find clear indications that the process has been tried and
operates. For example in describing process (e) on page 7 of the specification
the solvents used, the temperatures employed, and information about the
reaction are given in some detail.
Consequently we are satisfied that claim 1 should not be rejected on the
grounds applied against it, and recommend that the refusal be withdrawn.
This should not be taken as meaning, however, that broad process claims
are always allowable, nor that they are allotvable where the factual
situation is different, nor that there might not be other reasons for re-
fusing them. In many instances broad process claims which derive their
patentability from the new and unobvious utility of the products they
produce may be objectionable as speculative, forxxx encompassing the production
of groups of compounds so large that it is improbable that a substantial
number of the substances made by it possess the utility claimed for them,
when it is evident that many of the compounds have never been prepared,
or where there has been an inadequate disclosure of how the compounds have
been used. These, however, were not the objections made against claim 1.
G. Asher
Cfiair~nan
Patent Appeal Board
x concur tvith the findings of the Patent Appeal Board, and direct that
claim 1 sh_~ud not be refused for the reasons given in the final rejection.
fhe application is to be returned to the examiner to resume prosecution.
J.H.A. Gariepy
Commissioner of Patents
Dated at dull, Quebec
thlS 10th day of August, 1076
~cnt for Applicant
Rogers, Bereskin $ Parr
Rox. 100
401 I3ly St .
Toronto 1, Ontario