COMMISSIONER'S DECISION
Section 36: Insufficiency - Metal Salt Bacteriacides
A claim in the application was refused for being too broad, covering uncharted
and untested compounds. The applicant could not make a sound prediction that
the whole class of compounds would be operative, though something of lesser
scope related to what was already known in the prior art would be acceptable.
Rejection affirmed, modifications suggested.
************************
Patent application 139,601, Class 260/308.5, filed April 13, 1972 by
Rohm and Haas, assignee of George A. Miller and Ernest D. Weiler, is
directed to Metal Salt Complexes of 3-Isothiazolones. These complexes
are useful as fungicides and bacteriacides. Claim 1 of the application
was rejected by the examiner as being indefinite and for insufficiency
of description, i.e. for failure to satisfy Section 36 of the Patent
Act. Claim 8 was also refused (on other grounds) but the applicant over-
came that objection by cancelling the claim. No objection was taken to
claims 2-26 which remain in the application.
A Hearing took place on May 24, 1978, to consider the matter, at which time
Mr. George Fisk, attended by Mr. Frank Pole, represented the applicant be-
fore the Patent Appeal Board.
The claim which was refused is as follows:
1. A metal salt complex of the formula
<IMG>
wherein Y is a hydrogen atom, an unsubstituted or substituted
alkyl group of 1 to 18 carbon atoms, wherein the substituted
alkyl group is selected from the group consisting of hydroxyl-
alkyl, haloalkyl, cyanoalkyl, alkylaminoalkyl, dialkylaminoalkyl,
arylaminoalkyl, carboxyalkyl, carbalkoxyalkyl, alkoxyalkyl,
aryloxyalkyl, alkylthioalkyl, arylthioalkyl, haloalkyoxyalkyl,
morpholinoalkyl, piperidinoalkyl, pyrrolidonylalkyl, carbamoxy-
alkyl and isothiazolonylalkyl; an unsubstituted or substituted
alkenyl group of 2 to 18 carbon atoms wherein the substituted
alkenyl group is a haloalkenyl group; an unsubstituted or
substituted alkynyl group of 2 to 18 carbon atoms wherein the
substituted alkynyl group is a haloalkynyl group; an unsub-
stituted or substituted cycloalkyl group of 3 to 12 carbon atoms,
having a 3 to 8 carbon atom ring, wherein the substituted
cycloalkyl group is selected from the group consisting of
methylcyclohexyl, dimethylcyclohexyl, trimethylcyclohexyl,
ethylcyclohexyl and halocyclohexyl; an unsubstituted or
substituted aralkyl group of up to 10 carbon atoms, wherein the
substituted aralkyl group is selected from the group consisting
of haloaralkyl, nitroaralkyl, (C1-C4) alkylaralkyl, and (C1-C4)
alkloxyaralkyl; or an unsubstituted or substituted aryl group
of up to 10 carbon atoms; wherein the substituted aryl group is
selected from the group consisting of haloaryl, cyanoaryl,
nitroaryl, (C1-C4) alkylaryl, (C1-C4) alkylacylaminoaryl, (C1-C4)
carbalhoxyaryl and sulfamylaryl; R is hydrogen, halogen, or a
(C1-C4) alkyl group; or R and R'can be taken together to complete a
benzene ring, optionally substituted with one or more halogen
atoms, nitro groups, (C1-C4) alkyl groups, cyano groups, or
(C1-C4) alkoxy groups, M is a cation of barium, cadmium,
calcium, chromium cobalt, copper, iron, lead, lithium, magnesium,
manganese, mercury, nickel, silver, sodium, strontium, tin, or
zinc, or a complex of the cation with ammonia or an organic
amine, X is an anion forming a compound with the cation M, a
is the integer 1 or 2, and n is an integer which for the anion
X satisfies the valence of the cation M.
It is apparent from a mere reading of the claim that it encompasses innumerable
different compounds, doubtless tens of thousands. The issue is whether it
covers too many compounds.
In the Final Action the examiner explained his objections in the following
terms:
The refection of Claim 1 is maintained and the reason for such
objection is that the use of the expression "substituted" renders
the claim indefinite. As has been stated in earlier Office
Actions, the only substituents specifically described in
the disclosure for the hydrocarbon radicals are halogens.
The references in the middle paragraph of Page 3 of the Amend-
ment letter of June 1, 1976, to non-halogen substituents on
Pages 3 to 9 are mere recitation only. There are no physical
constants, spectroscopic data or proven utility for the non-
halogen substituted hydrocarbons. Therefore there is no
proof that these listed compounds were in fact ever prepared
due to the lack of identification factors. In the absence of
such data, the applicant is either claiming an invention which
he has not made or failing to meet the requirements of a
full disclosure, if he has made them. If the applicant has
made all those compounds that are disclosed and claimed (em-
braced by Claim 1), he does not give all the information
that is necessary for successful operation or use of the in-
vention. If he has not made them, then no valid claim can
be based on the incomplete description provided by the present
disclosure. Claim 1 is accordingly rejected.
His particular concern is that the "substituted" alkyl groups referred to in
lines 2 and 3 of the claim should be restricted to halogen substituted alkyl
groups.
In his written response, the applicant has argued that:
The applicant has described the invention in terms of the
chemical formulae of the compounds within the scope of
claim 1. There is no requirement in The Patent Act that utility
be proven, or that there be proof in the specification that the
listed compounds were in fact prepared. The Examiner has no
basis in law for requiring what he calls "identification factors"
such as physical constants or spectroscopic data. The disclosure
given by the applicant is adequate for a person skilled in the
art to ascertain what is covered by the invention, and it is not
seen that spectroscopic data or physical constants would aid
such a person.
The applicant is only required by Section 36(1) to correctly
and fully describe the invention and its operation or use, in
such full, clear, concise and exact terms as to enable any
person skilled in the art or science to which it appertains,
to make, construct, compound and use it. The applicant is not
required by that section to disclose proof of utility, nor to
give extraneous matters, such as the physical constants of the
compounds included within the scope of the invention. The
Examiner's mere suspicion that some of the compounds within the scope
of the invention have not been made should not be enough to dis-
entitle the applicant from the full scope of protection to which he
is entitled.
At the Hearing Mr. Fisk relied heavily upon applicants prior Canadian Patents
866828, March 23, 1971 and 88812 issued January 4, 1972. In them the 3-isothia-
zolone compounds themselves are claimed, as distinct from the metal salt complexes
thereof which are the subject of the present application. The patents, he
said, demonstrates that the compounds as a group were known previously in the
patent literature, and further that they are known to possess the same
biocidal properties as the metal complexes (though they were not so stable).
By forming the metal complexes of the "known" compounds their stability is
enhanced. It was consequently a reasonable assumption (Mr. Fisk contend-
ed) that once it, was discovered by the applicants inventors that it
could improve the stability of some of the compounds by metallizing
them that all (or at least nearly all) of the compounds would be improved
by metallizing them. It was emphasized that the starting compounds were
known, and that both the compounds and the metal complexes possess the
same useful bacteriacidal properties. Mr. Fisk says that these factors
serve to distinguish the present application from that considered in
Monsanto v. Commissioner of Patents, Patent Office Record, April 25, 1978;
affirmed Federal Court of Appeal, June 24, 1977; now under appeal to the
Supreme Court.
In the Monsanto ease we rejected certain claims for being too broad, and
going beyond the area of sound prediction. In Monsanto the applicant had
specifically shown that three compounds were effective, but attempted to
claim 126.
To further distinguish from Monsanto, Mr. Fisk referred to the fact that
the applicant had exemplified in his specification 56 different complexes,
with the ring substituents ranging from those which are strongly electro
positive to those strongly electro negative. He also adduced an affidavit
from one of the two inventors in which Dr. Miller avers, inter alia, that
metallizing the compounds increased their stability, and consequently their
usefulness, that a competent chemist would have no difficulty in complexing
the compounds, and that he saw no reason why all of the compounds covered
would not have the same bacticidal activity since they all contain the
same basic structure.
As for the emphasis placed upon the compounds tried (56), we note that
56 out of many thousands is a much smaller proportion than the 3 out
of 126 exemplified in the Monsanto case. On the other hand, consideration
must be given to the spectrum or range of the examples within the group in
assessing how useful such examples are in demonstrating that the whole group
of compounds are likely to be effected. Put differently, if all the examples
were restricted to a small corner of the whole field claimed, they might
not serve to demonstrate that it would be a reasonable hrcdiction that the
whole field is effective. 1f judiciously scattered throughout thcù whole field,
they mil;ht.
Mr. Disk also referred to numerous cases to support his contention that a
patentee need not investigate every possible substance within a group claimed
if there is a reasonable probability that all compounds will work. These
included:
Burton Parsons v Hewlett Packard S.C. 1975, 17 C.P.R.(2d) 97
Mineral Separation v Noranda Mines 1950 S.C.R. 36
Leonhardt v Kalle (1895) 12 R.P.C. 103
Olm Math cson v Biorcx (1970) R.P.C. 157
Mobil Oil Corporation's Application 1970 Fleet Street Reports 265
Our problem, then, is to decide whether in the present situation the applicant
could make a "sound prediction" that the whole class covered by the claim is
operative. In doing so we must also weigh the interdictions against speculative
overclaiming explored in depth in the Monsanto decision, s_up ra, and developed
in such jurisprudence as Iioechst v Gilbcrt (1966) S.C.R. 189; Rhone-Poulenc v
Gilbert (1968) S.C.R. 950 at 953; Steel Co, of Canada v Swaco Wire and Nail
11 C.P.R. (2d) 153 at 195; B.V.D, v Canadian Celanese (1936) Ex. C.R. 139 at
148 and 1936 S.C.R. 221 at 237; Boehringer Sohn v Bell Craig 1962 Ex. C.R. 201;
liocchst v (filbert (1964) Vol. 1, Ex. C.R. 710 and 1966 S.C.R. 189; In re May and
Baker (1948) 65 R.P.C. 255, (1949) 66 R.P.C. 8 and (1950) 67 R.P.C. 23;
Socicte Wione-Poulcnc v Ciba (1967) 35 F.P.C. 174 at 201-205 and 1968 S.C.R. 950;
In re Abraham Esau (1936) 49 R.P.C. 85; In re Shell Development (1947)
64 R.P.C. 151; Rohm $ Ilaas v Commissioner of Patents 1959 Ex. C.R. 153;
Vidol Dyes v Levenstein (1912) 29 R.P.C. 245; and Eastman Kodak's Application
1970 R.P.C. 548 at 561-563. Also of interest is the United States decision
In re Stokal et al 113 U.S.P.Q. 283 (1957) and the recent Japanese decision
of the Tokyo High Court, Farbwerkelbechst v the Director of the Patent Office
as reported in the International Review of Industrial Property & Copyright
(IIC) Vol. 8, No. 8, 1977 at p. 566.
Having weighed all these factors we have reached the conclusion that there
might be some basis for taking it as a reasonable prediction that the compounds
shown in the prior patents drawn to our attention, viz Canadian patents
886828 and 889812, and U.S. patents 3647910 and 3523121, would all be more
stable and effective if metallized, and recommend that the applicant be
permitted claims of the same scope in this application. The prior art shows
that it was known that such compounds possess bacteriacidal properties. They
all possess the same basic isothiazolone nucleus. It has already been recognized
that there was adequate support for such compounds in unmetallized form in
the issued patents.
We note, however, that rejected claim 1 covers a very much larger field than
that disclosed in the prior art of record, and in that respect Mr. Fisk's
arguments about the compounds being known do not hold. In so far as it exceeds
the prior art limits, we are satisfied that the claim goes beyond the area
of reasonable prediction into that of speculative overclaiming, and recommend
that it be refused.
The claims in the prior patents are already of wide scope. Claim 1 of this
application opens up the field considerably further, without any good evidence
that the wider field is operative. At the Hearing Mr. Fisk based his
arguments upon the proposition that claim 1 is directed to metalized
dermatmes of compounds already disclosed in the prior art patents. To
quote:
This is a well known class of compounds published in a
Canadian patent prior to the filing of this case.
Consequently we think it only proper that the claim 1 should in fact be limited
to what was shown in that prior art. If so restricted the claim would be based
upon what could be reasonably predicted, and should be allowed to proceed.
Gordon A. Asher
Chairman
Patent Appeal Board, Canada
Having considered the prosecution of this application and the recommendations
of the Patent Appeal Board, I now refuse claim 1 under Section 42 of the Patent
Act. If claim 1 is amended to the subject matter suggested by the Board, it
will be acceptable. The applicant has six months within which to make such
amendment or to act under Section 44.
J.A. Brown
Acting Commissioner of Patents
Dated at Hull, Quebec
this 20th. day of July, 1978
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A
Ottawa, Ont.