COMMISSIONER'S DECISION
SECTION 36: Claims for Compounds with Carriers
The applicant claimed a process to make new compounds, the new compounds
themselves, a method of using the compounds, and insecticidal compositions
comprising the compounds with carriers. The latter set of claims having
been refused in a final rejection, the applicant removed the claims to
the compounds, and argued that with their deletion he was entitled to
retain the composition claims. It was held that in the present circumstances
the composition claims did not properly define the invention. See
C.D. 296, 310, 461, 464, 465, 466 and 467.
Rejection: Affirmed
*****************
Under Rule 46(5) of the Regulations made under the Patent Act, the owner of
patent application 188750, Class 260-315.1, has asked that the prosecution of
the application be reviewed by the Commissioner and the Patent Appeal Board.
The application was filed on December 31, 1973 by Celamerek GMBH, a German
company, the assignee of the inventors, Thomas Klaus et al. The invention
relates to Insecticidally and Acaricidally Active compositions.
At the time of the rejection, the application included claims to a method of
preparing certain novel imidazolidine compounds, to the new compounds, to a
method of applying the new compounds to insect infested areas, and to
compositions comprising the compounds mixed with diluents and carriers. There
were thus four types of subject matter claimed:
(1) a process to make the compounds
(2) the compounds
(3) a method of using the compounds
(4) compositions comprising the compounds with carriers
The examiner rejected the composition claims on the ground that they are not
inventively different from the claims to the compounds. He relied upon
Gilbert v. Sandoz (1971) 64 C.P.R. 14 (Ex. Court) and (1974) S.C.R. 1336
as authority for his rejection.
The applicant requested that consideration of the rejection, be delayed pend-
ing the outcome of the appeal taken from a Commissioner's decision taken on
a similar case, Agripat v Commissioner of Patents, published in the Patent
Office Record of May 17, 1977, beginning at page xvii. The appeal to the
Federal Court of Canada affirmed the Commissioner's decision on December 14,
1977, under Court file no. A-589-76.
On April 12, 1978, the applicant proposed an amendment in which he proposed
to delete the claims to the compounds (which lead not been refused), and to
retain claims to the composition (which had been refused). He also wishes
to maintain claims to the process of preparing the compounds, and to the
method of using the compounds (but not the composition). Proposed claims
1, 2 and 3 are typical of the new claims.
1. An agent which comprises one or more compounds of the formula:
(see formula I)
(wherein R1 and R2, which may be the same or different, each represents
a hydrogen or halogen atom or a nitro or lower alkyl or alkoxy group
in the 3-, 4- or 5-position) or an acid addition salt thereof alone
or in admixture with a solid diluent or carrier in the form of a
wettable powder, granulate or dusting powder, a liquefied normally
gaseous diluent or carrier, a liquid diluent or carrier in the
form of emulsifiable concentrate, solution or colloidal dispersion,
or one or more known insecticides or acaricides.
2. A method of preventing or inhibiting the growth or proliferation of
insects and/or acarids which comprises applying to a site infested
with or susceptible to infestation by insects and/or acarids an
effective amount of a compound of formula 1 as defined in claim 1
or an acid addition salt thereof.
3. A process for the preparation of compounds of formula I as defined
in claim 1, or an acid addition salt thereof, which comprises reacting
a compound of the formula
(see formula II)(wherein R1 and R2 are as defined in claim 1) with a compound of
the formula:
OHC-CCl3 III
whereby a compound of formula I is obtained and, if desired, subsequent-
ly converting the compound of formula I thus obtained into an acid
addition salt thereof.
It should be noted that while claims 2 and 3 refer to claim 1 they bring in
only the compounds forming part of claim 1, and not the complete compositions
of that claim. They are not for methods and processes for preparing and
using the compositions containing carriers to which claim 1 is directed. Put
differently claims 2 and 3 refer to only a part of claim 1 for definition, and
in no way are they dependent on claim 1. With that explanation in mind we
will be referring subsequently to three sets of claims as for
1. A process of preparation of compounds
2. A method of using compounds
and 3. Composition claims
While there had been extensive arguments in the earlier prosecution about the
applicability of the Gilbert v Sandoz decision to the claims then on file, all
that was said by the applicant about the claims proposed now is:
Thus, in the revised set of claims no separate claims are directed
to compositions. It is believed, therefore, that the application
is not open to any objection based on the Gilbert vs. Sandoz
decision.
In the absence of any elaboration as to why this should be so, we take it
as applicant's position that Gilbert-Sandoz stands for the proposition that
he may claim either the compound or the composition, but not both. What we
must determine, then, is if this is so.
In the Final Action, the Examiner said:
The rejection of claims 1 to 8 and 23 is maintained and the
reason for such rejection is that the said claims are directed
towards unpatentable subject matter in that they are not inventively
different from the composition of matter claims 17 to 22. In the
Gilbert vs. Sandoz decision (64 CPR 14) quoted in the Office Action
of November 4, 1976 it has been established that claims to compounds
when associated with other substances arc not inventively different
from claims to the compounds themselves and that such claims cannot
therefore be allowed in a patent. Thus at page 35 of the Canadian
Patent Record (Reporter) reference cited above, it was stated that:
"I find, therefore, that the discovery of the use-
fulness of thioridazine, and the usefulness of the
chemical procedure for producing it represents a
patentable invention. On the other hand I am also
of the opinion that pharmaceutical compositions
consisting of a therapeutically accept able amount
of thioridazine associated with a carrier represent no
invention whatsoever save insofar as thioridazine
itself is an invention" and further:-
"... and, third, that since an invention of phar-
maceutical compositions was made, as distinct from
the invention of thioridazine itself which is
fully claimed in claims 1 to 9, there is no basis
for the presence in the patent of claims 10 and 11
(i.e. the pharmaceutical composition claims).
These last-mentioned claims, as I see it, cannot
stand as claims in respect of any inventive step
involved in the mixture of a substance with a
carrier since there is no invention involved in
such a step ...".
The court has thus established the principle, that when a novel
compound is claimed, claims to the compound when mixed, or in
association with other substances as carriers and/or diluents
are not patentable since the inventive concept resides in the
compound itself and is fully protected by the claims to the
compound itself. It is considered that this principle applies
to the claims rejected in this application since the inventive
matter resides in the products themselves which are already
claimed, there being no further invention in the mixture of
the compounds with a carrier. The addition of these carriers
and/or additives is merely to obtain a suitable method for
application. There is no interaction between the compounds
of the invention and these carriers and/or additives and
certainly no new and unexpected result in itself is obtained.
Claims 1 to 8 and 23 are accordingly rejected.
We take this as being quite clear that the examiner was rejecting the compos-
ition claims for failing to define the invention properly, and consequently
contravening Section 36. He has not tied his rejection to the presence of the
compound claims. He has said that the inventive matter is the compound, and
that the composition claims do not properly define the invention.
If we turn to the decision of the Exchequer Court in Gilbert v. Sandoz, supra,
at p. 35, we find:
I find, therefore, that the discovery of the usefulness of
thioridazine and of the usefulness of the chemical procedure for
producing it represents a patentable invention. On the other
hand I am also of the opinion that pharmaceutical compositions
consisting of a therapeutically acceptable amount of thiorida-
zine associated with a carrier represent no invention whatso-
ever save in so far as thioridazine itself is an invention.
With respect to the objection that there was no invention the
effect of these findings, as I see it, is first, that, no conse-
quences flow from the finding that there was no invention of
the class of phenothiazines since the patent contains no claim
and purports to give no monopoly of any such class; second,
that no consequence adverse to the patentee flows from the
finding that there was a patentable invention of thioridazine
since in this respect the objection is not sustained and, third,
that since no invention of pharmaceutical compositions was
made, as distinct from the invention of thioridazine itself which
is fully claimed in claims 1 to 9, there is no basis for the
presence in the patent of claims 10 and 11.
These last-mentioned claims, as I see it, cannot stand as
claims in respect of any inventive step involved in the mixture
of a substance with a carrier since there is no invention in-
volved in such a step. Vide Comm'r Pat. v. Farbwerke Hoechst
A.G., 41 C.P.R. 9, [1964] S.C.R. 49, 25 Fox Pat. C.99. Nor can
they stand as claims in respect of the invention of thioridazine
itself both because claims 1 to 9 represent the full extent of
the protection to which the defendant is entitled in respect of
that invention and because in the context of all the claims they
tend to go further than the protection to which the defendant is
entitled, as defined in s. 4E, of the Patent Act, in respect of the
invention of thioridazine and to monopolize, independently of
the other claims, compositions containing thioridazine, and
thus to restrict the use of thioridazine in a particular way even
by one into whose possession it may lawfully come whether by
express or implied or compulsory licence.
In its own consideration the Supreme Court also held that the composition claims
did not define the invention, saying at p. 1339:
I agree with this conclusion of the learned trial judge and
this makes it unnecessary to consider the further reasons
he advanced against the validity of claims 10 and 11.
We thus take it as evident that the composition claims were refused
because they did not define the invention. We find no indication that they were
refused because the compound claims were present. The product claims were
referred to solely to indicate that they were the ones which properly defined
the invention present.
In the Agripat decision referred to above, and affirmed by the Federal Court,
it was made quite clear that the objection to the composition claims was
predicated upon the fact that they failed to define the invention, since
the invention resided in the compounds. The refection was not based upon
the presence of the compound claims. The following extracts from that
decision indicate what we have in mind:
Claims must define the invention itself, and not go beyond it.
Section 36(2) of the Patent Act is statutory authority for
that statement. It requires that the inventor distinctly claim the
part which is the invention. What we must decide is how far an
applicant may go in achieving the goal of protecting his invention
fully without overstepping the limits of the invention by
claiming what is not rightfully his. For to paraphrase what was
said by the Supreme Court in B.V.D. v Can. Celanese (1937)
S.C.R. 221 at 237, if the claims in fact go beyond the
invention, the patent is invalid.
...
In Bergeon v. DeKermor Electric, 1927 Ex. C.R. 181, at 187, Mr.
Justice Audette came close to this matter when he said:
A man cannot introduce some variations or improvements,
whether patentable or not, into a known apparatus or
machine and then claim as his invention the whole apparatus.
He also quoted with approval the following passage from Nicholas on
Patent Law:
When the invention is for an improvement (as in this case)
the patentee must be careful to claim only the improvement
and to state clearly and distinctly of what the improvement
consists. He cannot take a well known existing machine,
and, having made some small improvements, place that before
the public and say: "I have made a better machine. There
is the acting machine of so and so; I have improved upon
that; that is mine, it is a much better machine than his."
He must distinctly state what is, and lay claim only to his
improvement. (underlining added)
When we turn to the case before us, we find that mixtures of insecticides
with carriers are well known. The applicant has replaced the old
insecticides with a different one, one patentable in its own right.
An argument might tell be advanced that his claim should be limited
to that "improvement" over the prior art.
We have also had reference to Dick v. Ellam's Duplicator Company (1900)
17 R.P.C. 196 at 202, where we find:
....I do think there is something in the invention, and
that the invention might have been patentable if the Patentee
had not thrown his net too wide as Patentees constantly do,
to catch people who do not infringe the real invention.
...
The Canadian Courts have been confronted with a similar issue to that
now before us in at least three instances where applicants wished to
claim substances mixed with carriers. In Rohm & Haas v. Commissioner
of Patents 1959 Ex. C.R. 133, the invention was for fungicidal compositions.
Not all the composition claims had been refused, and the principle ground
for rejecting those that were rejected was Section 35(2), now 36(2),
of the Patent Act. However, Mr. Justice Cameron added the following
comment (p. 163):
I am of the opinion however, that where a claim to a
compound has been allowed, a claim to a fungicidal com-
position merely having that compound as an active in-
gredient is not patentable.
In Rohm & Haas the claims to the compound had already been granted in another
patent for a divisional application, though the extract just quoted makes
no distinction of that nature, and indicates no limitation to such
situations.
In Commissioner of Patents v. Farbwerke Hoechst, 1964 S.C.R. 49 the
Commissioner rejected certain claims to a medicinal compound mixed with
a carrier. The applicant had filed nine other applications for the
medicine when made by nine different processes. In reversing the Ex-
chequer Court, the Supreme Court made the following comments at p. 53:
The fallacy in the reasoning (or the lower court) is in the
finding of novelty and inventive ingenuity in this pro-
cedure of dilution. It is an unwarrantable extension of
the ratio in the Commissioner of Patents v. Ciba, where invent-
ive ingenuity was found in the discovery of the valuable
properties of the drug itself.
A person is entitled to a patent for a new, useful and
inventive medicinal substance but to dilute that new sub-
stance once its medical uses are established does not result
in further invention. The diluted and undiluted substance
are but two aspects of exactly the same invention. In this
case, the addition of an inert carrier which is a common
expedient to increase bulk, and so facilitate measurement
and administration, is nothing more than dilution and does
not result in a further invention over and above that of
the medicinal itself. If a patent subsists for the new
medicinal substance, a separate patent cannot subsist for
that substance merely diluted.
In the case which is before us it is quite evident that the inventive subject
matter is the new chemical compounds and the processes relating thereto. It
is said on page 3 of the disclosure, last paragraph, that they are the active
ingredients, and that mixing them with diluents and carriers is but the
conventional manner of using them. The claims on file, e.g. claim 17,
are directed to the compounds, and even the method and process claims now
proposed are limited to the use or preparation of the compounds - not the
composition. Similarly the composition claims themselves, particularly
claims 9 to 14, demonstrate where the invention really lies.
We are consequently fully satisfied that in this instance the composition
claims go beyond the invention made, and do not properly define it. We can
only view deletion of the compound claims as an artifice and stratagem
to mask the real invention and evade Section 36. We believe claims 1 to 8
and 23 were properly refused, and recommend that proposed claim 1 should
also be rejected.
Gordon Asher
Chairman
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and considered the
recommendation of the Patent Appeal Board. I am satisfied that the
applicant is not by law entitled to claims 1 to 8 and 23, and proposed
claim 1, and refuse them. They must be removed from the application within
six months, or an appeal taken under Section 44.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 29th.day of August, 1978
Agent for Applicant
Fetherstonhaugh & Co.
Box 2999, Station D
Ottawa, Ontario