COMMISSIONER'S DECISION
INSUFFICIENCY OF DISCLOSURE: New Amines
The applicant claimed several ways of making certain new amines useful
pharmaceutically. Only some of the processes were described in any detail.
It was concluded that the remaining processes were mere conjecture, and
on the evidence it could not be said that they had been invented. Other
processes refused by the examiner were held to be sufficiently dis-
closed.
Rejection: Modified.
The Patent Appeal Board has held a Hearing to review the final rejection
of patent application 101368, Class 260-239.17. In the application the
applicant, Ciba-Geigy AG, assignee of Max Wilhelm, claims certain new chem-
ical components which are useful medically. The applicant was represented
at the Hearing by Mr. R. Fuller.
At the time of the rejection, the application contained both process claims
and product claims dependent on the process claims (as is required by
Section 41 of the Patent Act). The examiner objected to the product claims
as being too broad. By amendment subsequent to the Final Action, the
product claims were restricted to comply with the examiner's requirement,
and they are no longer in issue.
We are left with the refusal of the process claims (now Claims 1-16 as amended
on August 1, 1975). Claims 1 and 11 illustrate what they cover:
1. A process for the manufacture of new amines of formula I
(see formula I)
wherein R1 represents hydrogen or lower alkyl; R2 represents lower
alkyl; R3 represents lower alkyl, and Ph represents a meta- or para-
phenylene radical, unsubstituted or substituted once by alkyl or
alkenyl with 1 to 4 C-atoms or by halogen, and pharmaceutically
acceptable salts thereof, which comprises a) reacting a compound of
formula V
(see formula II)
where R1, R2 and Ph have the above significance, X1 repre-
sents the hydroxyl group and ~ represents a reactive esterified
hydroxyl group, or X1 and Z together form an epoxy group, with
an amine of the formula
NH2-R3
wherein R3 has the above significance; or b) reacting a compound
of formula VI
(see formula I)
wherein R1, R2 and Ph have the above significance, with a
compound of the formula
Z-R3
wherein Z and R3 have the above significance; or c) reacting a
compound of formula VIII
(see formula II)
wherein R1, R2 and Ph have the above significance, with a compound
of formula
IX
(see formula III)
wherein Z, X1 and R3 have the above meanings; or d) removing from
a compound of formula I wherein R1, R2, R3 and Ph have the above
significance and which possesses a removable radical on the
nitrogen atom of the amino group and/or on the hydroxyl group,
said radical or radicals; or e) reducing a Schiff base of
formulae XII or XIII
(see formula IV)
or
(see formula V)
or a ring-tautomer, corresponding to formula XIII, wherein R1, R2,
Ph and R3 have the above significance and R3'H is the same as R3;
or f) reducing in a compound of formula XVI
(see formula VI)
wherein R1, R2, R3 and Ph have the above significance, the
2-oxo group to a hydroxyl group; or g) reacting a reactive
acid derivative of a carbamic acid of formula XVII
OH
HOOC - NH - Ph - O - CH2 CH - CH2 - NH - R3 (XVII)
wherein Ph and R3 have the above significance, with an amine of
formula
R1 - NH - R2
wherein R1, and R2 have the above significance; and, when
required, resulting racemates are resolved into the optical
antipodes, and/or resulting free bases are converted into
their pharmaceutically acceptable salts or resulting salts
into the free bases or into other salts which are pharmaceutic-
ally acceptable.
11. A process as claimed in claims 1 to 3, wherein compounds of
formula III
(see formula I)
are prepared in which R1 and R2 each represents lower alkyl,
R~ represents lower alkyl, R4 represents hydrogen or chlorine
or represents alkenyl with 1 to 4 C-atoms, from corresponding
intermediates of the various formulae given in claim 1 in
which R1, R2 and R3 have the same values as given above for
R~, R~ and R~ and Ph is a p-phenylene radical substituted by
R4 as defined above.
The examiner refused such claims on the ground that there was inadequate
support for them in the disclosure. He has stated that there is no specific
description of processes b to g referred to in claim 1, that they are not
particularly described, and (to quote):
a) none is described at all, therefore insufficiency under
Section 36(1).
b) they are not true equivalents of the method described.
c) they require millions of starting materials the majority
of which may not exist.
d) their value is pure conjecture at best.
e) their presence in the claims deprives the public of the
corresponding basic right afforded by Section 41(1).
On the ether hand, it is the applicant's position that it is not necessary
for him to provide working examples for all the processes claimed because
they are directed to methods known generally, and that it would be apparent
to those skilled in the art that they could be used to make the compounds
desired. He has pointed to the "extensive" description given on pages 11 to
18 of the disclosure. To quote from his response of August 1, 1975:
Applicants believe that it is not necessary for them to exem-
plify every process specified by means of a worked example
but that they should provide sufficient information in their
specification to enable the man skilled in the art to understand
the invention and to be able to put it into practice on the basis
of the disclosure. Applicants believe that this requirement has
been completely fulfilled in the present case. Thus, for the
Examiner to allege that "one method of preparation does not provide
support for all or any other methods" is to ignore two things:
1. this invention resides in the useful properties of the products
described and
2. a detailed description of the various aspects of the process is
set out on pages 11 to 18 of the specification.
It is his view that where Section 41 applies, applicants are entitled to claim
all known methods "set out" in their specifications, and cites for that
proposition Sandoz v. Gilbert 1974 S.C.R. 1336 (8 C.P.R. (2d)210) where the
Supreme Court of Canada concluded that where a detailed description of a process
for making a phenothiazine using a chloroethane amide had been described
in detail, it was not necessary to give the same detail in describing the
process when bromoethane amide, was used.
He has further submitted that:
The court decisions to which the Examiner has drawn applicants'
attention largely primarily attack the claims of the patents con-
cerned on the basis of their undue breadth in respect of the
compounds claimed. As previously noted these objections are
believed to largely fall away because of the restrictions now made
to the scope of the products which are claimed. None of these
decisions are considered to be as pertinent in respect of the
process claims as the Sandoz v. Gilcross decision which has been
discussed in some detail above.
Finally, to deal with the Examiner's remaining objections of the
process variants b) and g) which are set out on the last page of the
Final Action, applicants have the following comments to make.
a) The detailed description of these process variants is provided
by the detailed description on pages 11 to 18 of the disclosure.
It is therefore completely untrue to say that applicants have not
satisfied the requirements under Section 36(1) of the Patent Act -
see the other comments on this point above.
b) The allegation that "they are not true equivalents of the method
described" is not understood. First it is pointed out above that
all the methods a) and g) are described in the disclosure. Second,
the methods are known and applicants have described them as all
applicable to the preparation of the required compounds. Clearly
therefore applicants regard them as equivalent and presumably such
a view can only be successfully contested [by] the Examiner if he provides
clear evidence to the contrary or establishes that one or more of
the methods claimed is inoperable. In the absence of such evidence,
the Examiner has no right under the Statute to contest the applicants'
statements in the disclosure which are made under oath.
c) In view of the drastic restriction to the scope now made to
the claims this objection is believed to have been completely
overcome.
d) Surely the value of these processes is for the applicants to
decide not the Examiner. To suggest that they are merely conjecture
is clearly untrue in view of the clear proof that applicants have
provided in the response filed on this application on October 23, 1972
showing that these processes are not mere speculation but processes
which can be used to produce the required compounds.
e) This objection is not understood. Applicants are clearly entitled
under the Patent Act and particularly by Section 41(1) to claim all
the known processes for preparing all the useful products that they
have described in their disclosure. flow the present claims could
deprive the public of the corresponding basic right afforded by
Section 41(1) is not understood as any further process which is not
described by applicants is available to the public to use without
restriction provided further patents have not been obtained because they
are inventive.
At the Hearing the examiner distinguished the present situation from that
in Sandoz on the basis that in Sandoz the method used when bromoethane is
employed is the same as that utilized when chloroethane is used, whereas in
this application distinctly different methods are claims. In Sandoz the
method was one of condensing 3-methylmercapto-Phenothazine with an w -
halogen-alkyl-amide. In the words of the Supreme Court (p.1338):
"Claims 2 and 3 cover the same process using the chloro-ethane and bromo-
ethane amide respectively."
As to the Examiner's objection that the processes described by the applicant
are of a speculative nature, the applicant has this to say:
Another objection of the Examiner made in the Final Action was
that the process variants which are not exemplified represent mere
conjecture. Applicants strongly contest such a view for several
reasons.
1. The Examiner has produced no evidence to indicate that the
processes would not produce the required products.
2. The specification is filed together with a sworn petition and
therefore the statements must be taken as true in the absence
of any evidence to the contrary.
3. The Examiner's objection is clearly untrue in view of the
clear proof that applicants have provided in the response
filed on this application on October 23, 1972 showing that
these processes are not mere speculation but processes which
can be used to produce the required compounds.
The first question which must be determined, then, is whether there is an
adequate description of the processes claimed, and the second is, whether such
disclosure as has been made is speculative rather than factual.
The onus of disclosure that Section 36 places upon an inventor is both heavy
and exacting (cf. RCA v. Raytheon 1956-1960 Ex. C.R. 98 at 109). In that
decision the court 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 in-
vention as the inventor could at the time of his application (p.109).
The proposition is supported by Noranda Mines v Minerals Separation (1947)
Ex. C.R. 306 at 316; by French's Complex Ore v Electrolytic Zinc 1930
S.C.R. 462 at 470; by B.V.D, v Canadian Celanese 1936 Ex. C.R. 139 and
1937 S.C.R. 22; by Smith Incubator v Sealing 1937 S.C.R. 251; by Gilbert v
Sandoz (1971) 64 C.P.R. 7 at 42-45; and by Rh“ne-Poulenc & CIBA v Gilbert
1966 Ex. C.R. 59 F, 1967 S.C.R. 45.
At the same time, an inventor need not restrict his claims to what has been
"specifically described in the specification and illustrated in the accompany-
ing drawings," but within the breadth of the invention may claim it as
broadly as it would normally be construed by persons skilled in the art
(Riddel v Patrick Harrison (1956-1960) Ex. C.R. 213 at 253). And
Where a specification describes 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 experiment's do not require any exercise of
the inventive faculty. (B.V.D. v. Canadian Celanese, 1936 Ex. C.R. 140).
In Gilbert v Sandoz (supra , at p. 52, whereas 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 know 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 (1974 S.C.R. 1336 at 1344) revered, holding that:
... 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. 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.
In this case the products produced by the processes claimed are medicines.
Since the processes involve standard chemical methods, and would be unpatent-
able were they not to derive patentability from the medicines (cf Ciba v.
Commissioner of Patents 1959 S.C.R. 378), we are also concerned with sub-
section (1) of Section 41 of the Patent Act, and in particular its requirement
that the processes be "particularly described." It states 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)
We have already referred to the Gilbert v Sandoz case, in which, the invention,
it may be noted, was also governed by Section 41. In finding the process for
using the bromine derivatives valid, the Supreme Court implicitly determined
that the claim dependent on it satisfied Section 41.
In Hoechst Pharmaceuticals v Gilbert (1965) 1 Ex. C.R. 770 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 and method of preparing the ureas
referred 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. (195 S.C.R. 378) appear to me to
apply.
The court subsequently held the claims invalid for "preposterous" overclaim-
ing because it could not be said that "... all, or substantially all, members
of the class of sulphonyl ureas 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, the objection of undue breadth in
the product claims has been satisfied by the latest amendment.
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 required 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 obvious
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 falling 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 beer 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 process for the preparation of 2-phenyl-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 diethanolamine 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 tempera-
tures, 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 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. Claim 8
is thus broader than s. 41(1) permits and is accordingly invalid.[under-
lining added]
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 he
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 been met, and the claim which has been re-
fused 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 object to multiple processes being claimed where Section 41 is involved,
and the processes were all described. 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 objection cannot be made in
this case.
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 claims 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
be 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 then. That objection does not
now exist in the present case, the scope of the product claim has been
circumscribed, and the breadth of what is now claimed is supported by sufficient
examples of compounds within the class possessing the desired utility,
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 (as now) defined" (Boehringer, p. 413) have the
utility referred to in the specification.
If the applicant is not allowed to protect his invention when made by all
the obvious ways of making it, then, as was said by the Supreme Court in
Burton Parsons v Hewlett Packard (17 C.P.R. (2d) 97 at 106), if "... some
area is left open between what is the invention as disclosed and what is
covered by the claims, the patent may be just as worthless as if it was
invalid. Everybody will be free to use the invention in the unfenced area
...." 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.
The same conditions were present, and conclusions reached, in Boehringer
Sohn v Bell Craig 1962 Ex. C.R. 201 and 1963 S.C.R. 410.
What we distil from these cases relative to the issue now being considered
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 substance made
by it do not possess the utility claimed for them. It cannot
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.
We have come to the conclusion that the methods are standard methods known
to the skilled chemist. This is confirmed by the amendment of October 23,
1972, showing that variants c, d, e, f and g can be used to prepare the
desired compounds. What concerns us, however, is whether at the beginning
of 1970 (the priority date of the application) it can properly be
said that the inventor had made the invention
claimed, or whether on the contrary at that time the processes (as distinct
from the products) were speculative. What we must next determine is whether
on the evidence before us the applicant had completed his invention on 1970
in sufficient detail that it can be fairly said that he invented all of the
processes claimed.
The objection that a claim is too broad because it covers unknown and unchartered
areas where the applicability of the invention is unpredictable, and further
inventive experiments would be needed, arises most frequently in the chemical
arts. It has been said that "There is no prevision in chemistry" (Chipman
Chemicals v. Fairview Chemical 1932 Ex. C.R. 107 at 115), and while that may
be an overstatement, nevertheless it indicates the special caution to be
exercised when making assumptions in the chemical arts. Since claims are
defective if they are speculative, there are important limitations upon an in-
ventor's right to generalize.
In Hoechst v. Gilbert, (1966) S.C.R. 189, a chemical case where certain drugs
were claimed, the Supreme Court of Canada has come out (at p. 194) against
speculative claiming in these terms:
In challenging the validity of the patents in question, counsel
for the respondents put his case upon the footing that no one
could obtain a valid patent for an improved and untested hypo-
thesis in an unchartered field. That is what the appellant
has tried to do in claim 1 of each of the patents. It has sought
to cover, in the words of Thurlow J., "every mathematically
conceivable sulphonyl area of the class" and has consequently
overclaimed, and, in so doing, invalidated claim 1 in each patent.
The point was also considered in Rh“ne-Poulenc v Gilbert (1968) S.C.R. 950
at 953.
In Steel Co. of Canada v. Sivaco Wire and Nail, 11 C.P.R. (2d) 153 at 195,
we find the term "mere paper suggestions" applied to patents for inventions
which have not been developed.
In B.V.D. v Canadian Celanese (1936) Ex. C.R. 139 at 148 it was stated that
before a prior patent may be relied upon to anticipate a later patent "It
must be shown that the public have been so presented with the invention that
it is out of the power of any subsequent person to claim the invention as
his own. And an improvement, claimed to be invention, must not be dismissed
as unpatentable merely because of some vague adumbration of it in the prior
art." It seems to us that a corollary of that, which should be equally valid,
is that a prior patentee should not be entitled to claim an invention which
he may have outlined or foreshadowed without bringing it into being. The
Supreme Court (1936 S.C.R. 221 at 237) found the B.V.D. patent invalid because:
"The claims in fact go far beyond the invention."
In Boehringer Sohn v Bell Craig, 1962 Ex. C.R. 201 we find:
.., a patent purporting to give an exclusive property in more than
the inventor has invented is also contrary to what the statute
authorizes.... (p.239)
and
.., a patent which includes in its specification a claim which claims
more than the inventor has invented purports to grant an exclusive
property in more than the inventor has invented and at least in so
far as that claim is concerned the patent, in my opinion, is not
granted under the authority of the statute and is therefore not
lawfully obtained. ...a claim which is invalid because it claims
more than the inventor invented is an outlaw and its existence as
defining the grant of a property right is not to be recognized as
having any validity or effect (p. 241).
Mr. Justice Thurlow found the claim in suit to be too broad because it covered
a large number of substances of which only a limited number had been prepared.
The Supreme Court (1963 S.C.R. 410 at 412) supported his findings. The
Boehringer Sohn case involved pharmacological substances whose properties may
be even less predictable than other chemical substances, and the group of
compounds claimed was extremely large. Similar conclusions in comparable
circumstances were reached in Hoechst v. Gilbert (1964) vol. 1, Ex. C.R. 710
and 1966 S.C.R. 189, and in Re May and Baker (1948) 65 R.P.C. 255, (1949)
66 RPC 8 and (1950) 67 R.P.C. 23. The Supreme Court, in the Hoechst decision,
adopted the view that "no one could obtain a valid patent for an unproved and
untested hypothesis in an unchartered field." The dangers of speculative claiming
were also explored in Soci‚t‚ Rh“ne-Poulenc v Ciba (1967) 35 F.P.C. 174 at
201-205 and 1968 S.C.R. 950 in which a broad claim was found invalid because the
majority of the substances of the class had never been made or tested by anyone.
Objections of this nature are not, however, limited to pharmaceutical invert-
tions, or even to chemical inventions. In the Matter of Abraham Esau et al
(1936) 49 R.P.C. 85, it was said of an electrical apparatus that
I think that it is most desirable that patentees in such circum-
stances should realize that it is not the practice of the Patent
Office to allow broad and indeterminate claims of a speculative
character, and that if they put such claims into their complete
specification, they must expect to find them disallowed unless
they are able to give a sufficiently detailed and full description
to support them.
In the Matter of Shell Development, (1947) 64 R.P.C. 151 the application involved
a process for separating organic mixtures with sulfolane solvents. The ten
detailed examples dealt with separations where the organic mixtures were all
hydrocarbons, and while there was no detailed description of processes involving
other organic mixture, the specification listed some foray mixtures other
than hydrocarbons. In finding the claim too broad, the Patent Tribunal stated:
It is, I think, sufficient to say that from the specification it
appears, first, that the prior art consorts in the separation of
organic mixtures by the use of well known solvents; secondly
that the extent to which the field, namely, the separation of
organic mixtures by the use of solvents has been explored does
not appear on the face of the specification, but, upon a fair
reading of the document, I am satisfies that it does not assert,
putting the matter at its highest, that anything like the whole of
that field has been explored; thirdly, that the Applicants' claim
that the employment of their sulfolane solvents, of which they
give in the specification a lint of over one hundred, give results
which compare advantageously with other solvents hitherto used;
fourthly, that the Applicants make clear that the methods of
employing their solfolane solvents are those which are already well
known in relation to the prior art; fifthly, that the Applicants
in their specification gave particulars of ten experiments, all
of which deal with hydrocarbons. It is further, in my view, a
fair reading of the specification that the solvent effect of the
sulfolanes has been explored by the Applicants primarily in regard
to hydrocarbons. It is true that on page 4 of the specification
other examples of organic compounds are referred to which, it is
stated, "may be separated by the selective solvents of this
invention"; but, even so, with the addition of those substances,
only the fringe of the field in question is touched.
See also Rohm & Haas v. Commissioner of Patents, (1959) Ex. C.R. 153 where
claims were refused for being too broad and going beyond the invention made,
Vidal Dyes v. Levenstein (1912) 29 R.P.C. 245, and Eastman Kodak's Application
(1970) R.P.C. 548 at 561-563.
The problem before us is not peculiar to Canadian or British jurisprudence.
It has also been considered in the United States, for example, in In re Stokal
et al, 113 USPQ 283 (1957).
The practical problems which can develop from permitting broad speculative
claims are illustrated by the reasons leading to the introduction of both
Section 41 into the Canadian Patent Act in 1923, and Section 38A into the
British Patent and Designs Act in 1919. Section 38A came into being to
remedy an abuse which led to the domination of the British dye industry by
foreign interests who obtained broad chemical claims covering substances which
they had never made or tested, and who subsequently used such claims to
restrict the activities of their competitors (Transactions of the Chartered
Institute of Patent Agents, vol. 62, p. 92).
When we turn to the specification now before us, we find that many of the
processes are merely proposed processes for making the desired compounds, and
such processes are described as "possible" ways to make the products. Indeed
the whole disclosure in so far as it relates to the processes is so rife with
indications of what might possibly be done, and so replete with various
alternatives and suggestions for modifications that it is quite apparent the
draftsman could only have been speculating and casting his net far beyond
what had really been done. It is only when we turn to the examples them-
selves that we can perceive any concrete statements about processes really
used. They are all limited to process (a). In our view it would be completely
inappropriate under such circumstances to allow the applicant to claim as
widely as he proposes. To do so would be to condone "arm-chair inventioneer-
ing" and "paper chemistry" of the type censured in the decisions discussed
above.
Process (a) and (b) both involve amination, with or without alkylation,
done in a different sequence, and can, we think, he said to be the "same"
process within the meaning of Sandoz (supra p. 5), where both processes found
allowable were alkylations using an alkyl halide, in one instance the alkyl
chloride, in the other the alkyl bromide. For that reason we would allow
processes "a" and "b" to proceed together. The other processes, however,
are quite different. Process "c", for example, involves the preparation
of an ether, (f) the synthesis of an alcohol from a ketone, and (g) a
urea synthesis.
Recognizing the insufficiency of the disclosure, the applicant, on Oct. 23,
1972, submitted five new examples illustrating five of the six missing process-
es. We do not believe, however, that the applicant should be permitted to
retain claims on the basis of something done after the event, and not part
of the original disclosure.
It is on this basis, then, that we consider the examiner's objection was
justified with respect to claims 1, 6-11, 14, 18, 19, 20, 21, 22, 23, 26, 27,
33-38, 44-49 as they were on file, and they were properly refused. 1'he
remaining process claims and product claims dependent thereon would be
allowable where they are restricted to processes (a) & (b), or if not so
restricted now when so limited by amendment.
The examiner also had other reasons to reject the claims on file, but we
do not need to consider them in view of the amendments proposed on August 1,
1975, which overcame those objections. Of those proposed claims, 1, 6, 8,
9, 10 and 14 should be refused for the reasons stated above. The remaining
claims would be allowable if claim 1 was restricted to process (a) or
process (b).
Gordon Asher
Chairman
Patent Appeal Board, Canada
Having reviewed the prosecution of this application and the recommendations
of the Patent Appeal Board, I have concluded that the claims now proposed by
the applicant are unallowable, and I refuse them, However if claim 1 is
amended as suggested by the Appeal Board, then claims 1, 2, 3, 4, 5, 7, 11,
12, 13, 15, 16, 17, 18, and 19 would be allowable.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Bull, Quebec Agent for Applicant
this 7th day of February, 1977
Fetherstonhaugh & Co.,
Box 2999, Station D
Ottawa, Ontario