COMMISSIONER'S DECISION
Compound + Carrier - Ethanesulphic Acids
Applicants claims to compounds mixed with carriers were refused under
Section 36. Claims to the compounds themselves had been deleted
previously.
Final Action: Affirmed Sept. 14, 1979
***************
Patent application 144,4/1 (Class 260-464.4), was filed on June 12, 1972,
for an invention entitled Beta-Substituted Ethanesulphinic Acids And Oxygen
Or Sulphur Esters Thereof As Plant Growth Regulators. The inventors are
Kurt H.G. Pilgram et al, assignors to Shell Oil Company. The Examiner in
charge of the application took a Final Action on June 18, 1975, refusing
to allow it to proceed to patent. In reviewing the rejection, the Patent
Appeal Board held a hearing on May 9, 1979, and at which the Applicant
was represented by Mr, R. Wilkes.
The invention in question involves certain chemical compounds which are
sulphinic acids, esters of said acid, and amides derived from them.
Their exact chemical structure is not material to the issues which arise.
The compounds are useful as plant growth regulants, for inducing early fruit
ripening, for stimulating seed germination, and the like.
At the time of the rejection some claims were directed to chemical compounds
which are new (claim 12-19), some to compositions consisting of the
chemical compounds and other similar compounds mixed with an adjuvant
therefor (claims 1-11), and one claim to a method of using the compositions.
The Examiner refused claims 1 to 11, relying upon what was said by the
Court in Gilbert v Sandoz 64 CPR 14, reporting the decision in the Federal
Court, and 8 CPR (2d) 210 (where the holding of the Supreme Court of Canada
is reported). The reason for the rejection was that the claims to the
compounds represent the full extent of the protection to which the applicant
is entitled.
Disposition of this application was deferred until the conclusion of the
appeal in Agripat v Commissioner of Patents, decided by the Federal Court
of Canada on Dec. 14, 1977, which dealt with a similar question.
After the Final Rejection the applicant indicated he would like to cancel
all the compound claims (12-19), and maintains that with such cancellation
he would be entitled to the composition claims 1-11, on the basis that while he
may not be entitled to both sets of claims, he is entitled to claim either
set by itself.
The issue is complicated by the fact that the compounds in the composition
claims are somewhat broader than those covered by the compound claims. Mr. Wilkes
said at the Hearing that the compounds included in the composition claim are
partly old and partly new, while those in the compound claims are, it seem,
entirely new. That position appears to be substantiated, at least indirectly,
by the statement at the bottom of page 10 of the disclosure, which reads:
Many of the active compounds mentioned herebefore, in
particular all the compounds having the above formula I
wherein A is the group
<IMG>
have not previously been known in the art. Accordingly
the invention also provides novel compounds defined
by the formula....
Claim 1, which is reproduced below, will serve to illustrate both the nature
and wide scope of the rejected subject matter. The last line of the claim
(which has been underlined) is the principle point of difference between the
composition claims and the compound claims (other than the difference in scope already
mentioned). Many of the compounds listed in the claim are new, and have
been previously claimed by the applicant as new compound not only in this
application but also in his foreign priority applications. See, for
example, U.S. Patent 3830838, Aug 20, 1974, Cl. 260/551, Pilgram et al
assigned to Shell Oil. U.S. 3876678 Apr. 8, 1975 Cl. 260/456, and U.S. 3927062
Dec. 15, 1675 Cl. 260/456. There is no doubt, consequently, but that the
rejected subject matter covers many new chemical compounds mixed with an
adjuvant.
Claim 1- A plant growth regulant composition comprising a compound of
the formula
<IMG>
wherein X represents chlorine, bromine, iodine, hydroxy,
alkoxy of up to 3 carbon atoms, aryloxy of up to 10 carbon
atoms, alkylthio of up to 3 carbon atoms, aralkoxy of up
to 10 carbon atoms, acyloxy of up to 4 carbon atoms, alkly-
sulphonyloxy wherein the alkyl group contains up to 3
carbon atoms, arylsulphonyloxy, nitro, monoalkylamino or
dialkylamino wherein each alkyl group contains up to 6
carbon atoms, or A'R' wherein A' is oxygen and R' is
2-(dimethylcarbamoyl)-1-methylvinyl, 2-(methylcarbamoyl)-
1-methylvinyl or 2-(methoxycarbonyl)-1-methylvinyl; and
either A represents the group -Y-R. wherein Y is oxygen or
sulphur with the proviso that when Y is oxygen R is alkyl of up to
20 carbon atoms, aryl of up to 10 carbon atoms, aralkyl of up to
10 carbon atoms, alkenyl of up to 8 carbon atoms, alkynyl
of up to 4 carbon atoms, 2-(dimethylcarbamoyl)-1-methylvinyl, 2-
methylcarbamoyl)-1-methylvinyl, 2-(methoxycarbonyl)-
1-methylvinyl or ZR2 wherein Z is alkylene of up to 4
carbon atoms and R2 is alhylthio of up to 3 carbon atoms,
alkoxy of up to 4 carbon atoms, aralkoxy of up to 10 carbon atoms,
hydroxy, or a beta substituted ethane-sulphinyloxy moiety wherein
the beta substituent is identical to the beta substituent
represented by X in formula I above; and when Y is sulphur R
is alkyl of up to 8 carbon atoms optionally substituted with
chlorine or bromine, or aralkyl wherein the alkyl group contains
up to 4 carbon atoms; and R may also represent hydrogen, if Y
is oxygen and X is any of the moieties represented by X above
except. A'R';
or A represents the group <IMG> wherein R3 and R4 may be the same
or different and each represents hydrogen, alkyl of up to 20
carbon atoms or aralkyl of up to 10 carbon atoms; either or both of
R3 and R4 may be R5Y' wherein R5 is alkylene of up to 4 carbon
atoms and Y' is hydroxy or betahaloethanesulphinyloxy wherein the
beta halogen substituent is chlorine, bromine or iodine with the
proviso that when Y' is hydroxy X represents any of the
moities describes for X above except A'R' and when Y' is a
betahaloethanesulphinyloxy X is chlorine, bromine or iodine,
of R3 is hydrogen R4 may also represent aryl of up to 10 carbon
atoms, alkenyl of up to 8 carbon atoms, cycloalkyl of up to 8 carbon
atoms, R5Y2 wherein R5 is as described above and Y2 is alkylthio
of up to 3 carbon atoms, alkoxy of up to 4 carbon atoms, when R3
is hydrogen R4 may also represent a substituted phenyl of the
formula
<IMG> wherein Z' is alkyl of up to 3 carbon atoms,
alkylthio of up to 3 carbon atoms, alkoxy of up to 3 carbon atoms,
alkylsulphonyl of up to 3 carbon atoms, chlorine, bromine, nitro
or trifluoromethyl; and if R3 is hydrogen, alkyl or aryl R1 may
also represent hydroxy or alkoxy of up to 4 carbon atoms,
together with an adjuvant therefor.
The "adjuvants" have been defined at the bottom of page 18 of the disclosure,
are added to the compound by "conventional techniques", and comprise "modifier;
which are known in the agricultural chemical art to provide compositions in
the form of wettable powders, dusts, granules, pellets, solutions, emulsifiable
concentrates, emulsions and pastes." From this it is evident that there is
nothing unusual or unexpected in what adjuvants are used, their effect in the
compositions, or how they are mixed with the active chemicals.
In his report of Oct. 29, 19714, the Examiner said:
Claims are refused when the inventive matter is claimed in
association with other substances and it is clear that there
is no invention in the aggregation so resulting apart from
the inventive matter itself. The applicant may not claim
a chemical compound mixed with a carrier where the invention
as the compound itself. (Gilbert v. Sandoz 64 C.P.R. 14,
S.C. Oct. 18, 1972). For example an applicant who invents
a new chemical compound X, which he discloses as a useful
insecticide, may claim X but may not claim admixtures
thereof with regular insecticidal carriers. Conceivably,
if he had made a further invention by admixing it with a
special carrier that unexpectedly increased the effectiveness
of compound X significantly, he could claim that admixture
in a divisional application as directed to a separate
invention.
In response the Applicant argued that the effect of Gilbert v Sandoz (supra)
was limited to foods or medicine coming within the scope of Section 41(1) of
the Patent Act, but the Agripat v Commissioner of Patents decision (supra),
where the compositions were insecticides, has demonstrated the error of that
contention.
In his letter of October 4,1978, Applicant has taken the following position
In deciding this question, it seems to both Applicants and
their agents that two points, of law and the other of fact, are of
decisive importance. The Examiner, in both of his Actions, refer-
enced the salient portion of Gilbert v Sandoz. That decision,
as later followed by the Federal Court, Appeal Division, in Agripat vs.
The Commissioner, makes it clear that where new compounds are
claimed, then no invention can lie in compositions involving those
compounds. Therefore, the compositions cannot be claimed. Even
allowing that resolution of this specious logic must await further
comment by the Supreme Court, it is nevertheless abundantly clear
that neither the Supreme Court in both Farbwerke Hoechst v. The
Commissioner and Gilbert v. Sandoz, nor the Federal Court, Appeal
Division in Agripat v. The Commissioner were considering a situation
in which allegedly new compounds were NOT being claimed (not even in
the form required by Section 41(1), which does not apply to this
application). Thus there is not, and cannot be any consideration by
the Courts in any of these cases as to whether compositions can be
claimed in the absence of claims to allegedly new compounds involved
in those compositions. In this context it is also pertinent to note
the old dictum that what is not claimed is also expressly disclaimed.
Thus it is Applicant's view that none of these cases state that where
allegedly new compounds are involved, then only those allegedly new
compounds may be claimed. Further, the Examiner has not expressed such
a view: his only objection has been that if allegedly new compounds
are claimed, then compositions cannot be claimed as well. The
Examiner has not said that if the claims to the allegedly new compounds
are deleted, then the compositions still cannot be claimed.
Indeed if the Examiner is now proposing to adopt such a view, then
Applicants point out that they are entitled to an Office Action, which
is not a Final Action, both making that objection and indicating the
Examiner's grounds for raising such a new objection. Further there can
be no question that a composition claim is an inherently unallowable
form of claim: such claims were deemed valid by the Supreme Court
in, for example, Burton-Parsons vs. Hewlett-Packard (17 C.P.R.2d 97).
It is also well settled law that, subject to the constraints of
Section 2 of the Act, it is open to an Applicant to claim such of his
invention as he so desires to protect: he does not have to claim all
of it, nor does the Commissioner (or an Examiner) have any legal
basis to insist that any particular part of it be claimed if an
Applicant decides not to do so. It is an Applicant's prerogative
to decide just how much of what has been invented he shall take
steps to protect. Thus the Supreme Court in Baldwin v. Western Electric
(1934 S.C.R. 94 at 105) stated "It is only if the Applicant desires
to claim invention for a subordinate element per se that it is
necessary for him to claim the element separately, if he wishes to
secure in it an exclusive property and privilege". Clearly such a
flexibility of claiming must extend to the embodiment of Applicant's
invention which he will take into the commercial market place
in this case, that is the compositions. Indeed this protection of
commercially useful inventions in terms of their marketable embodiments
is precisely what patents always have been all about. For example,
the Act from which our present Act derives (The Statute of Monopolies,
(21 Jac. T. c.3, 1623) contains the provision that patents are
directed to "any manner of new manufactures". Thus an Applicant past
in law, have the basic right to claim the commercial embodiment of
his invention. At the Hearing Mr. Wilkes said that this application was being t~~~ted
differently than some other applications, and in particular those which issued
to two particular patents to which he referred. What was done with certain
other applications is, however, hardly any criterion as to what should have
been done either with them or this application. Conceivably some oversight might have
been involved in their acceptance. The single reports on each of them dealt
only with informalities and nothing substantive was raised in them. Neither
of the applications came before the Board & Commissioner, nor did we have the
occasion to review their prosecution before grant. Further we question
whether it is proper for us to comment now upon their validity, and for that
reason we have nor identified them here. In any event it should be noted that
both of the patents were allowed before the Agripat decision mentioned above, and
further that in one of them all the compounds in the composition were old,
and are so described in the first paragraph of the disclosure. Consequently
it is not in any way analagous to the present application.
One of Mr. Wilke's arguments was that composition claims as such are inherently
patentable (he cited Burton-Parsons v Hewlett Packard, 17 C.P.R.2d 97 to show
that composition claims have in some instances been found valid). We of
course agree, subject of course to the proviso that in any particular case
there may be perfectly proper reasons why composition claims should be refused,
or would be invalid if allowed. The question is not whether composition
claims may be accepted, but when they may be accepted.
He also contends that Section 36(2), as interpreted by Baldwin v Western
Electric (1934 SCR 94) gives the applicant the right to decide what he wants
to claim, and he says "applicant" is the word used in the section, not
"examiner." Again we agree, but subject again to a proviso. The applicant may
decide which of any allowable claims he wishes to make. He cannot, however,
decide to make unallowable claims, and the Examiner is fully justified in
objecting to unallowable claims.
The applicant's position is that Gilbert-Sandoz stands for the proposition
that he amy claim either the compounds or the compositions, but not both.
What we must ascertain is whether that is so.
If we turn to the decision of the Exchequer Court in Gilbert v. Sandoz, supra,
at page 35, we read:
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 an 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. 46 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 [underlining added] .
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 advances against the validity of claims 10 and 11.
We thus take it as evident that the composition claims were forced because
they did not define the invention. We find no indication that they were
refused because of the compound claims were present. The product claims were re-
ferred to solely to indicate that they were the ones which properly defined
the invention present.
In the Agripat case referred to above, as published in the Patent Office
Record of May 19, 1977, beginning at page xvii, 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 rejection was not based upon
the presence of the compound claims. The following extracts from the
Commissioner's 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 sewing machine of so and so; I have improved upon
that; that is mine, it is a much better machine than his."
He must distinctly state what is, and lay claim only to his
improvement. [underlining added].
When we turn to the case before us, we find that mixtures
of insecticides with carriers are well known The applicant
has replaced the old insecticides with a different one,
one patentable in its own right. An argument micht well
be advanced that his claim should be limited to that
"improvement" over the prior Art .
We have also had reference to Dick v. Ellam's Duplicator
Company (1900) 17 R.P.C. 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
Rhom & 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 opinionhowever, that where a claim to
a compound has been allowed, a claim to a fungicidal
composition merely having that compound as an active
ingredient 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 Exchequer 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 procedure of dilution. It is an unwarrantable
extension of the ratio in the Commissioner of Patents v.
Ciba, where inventive 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 in 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 facile-
tate measurement and administration, is nothing more
than dilution and does not result in a further invention
over and above thar of medicinal itself. If a patent
subsists for the new medicinal substance, a separate patent
cannot subsist for that substance merely diluted.
We are consequently satisfied that the real objection to composition
claims in these cases is Section 36, and a holding that such claims do not
properly define the invention. The objection is not one based upon the
mere presence of the other claims.
We are also satisfied that the same objection arises with respect to claims
1 to 11 of this application, at least in so far as those claims cover new
compounds. We are not prepared to say now what might be the situation if
the composition claims were restricted to those where the compounds are
old. If they are old, in all probability they have been mixed with adjuvants.
Such hypothetical claims are not before us, nor have they been examined
for novelty or other possible objections. Our concern is claims 1-11
inclusive, which we believe should be rejected. We also note the great breadth
of claim 12, which should be considered if there is further prosecution.
G.A Asher
Chairman,
Patent Appeal Board, Canada
I have considered the prosecution of this application, the arguments of the
applicant, and the recommendation of the Patent Appeal Board. For the same
reasons given by the Board, I now reject claims 1-11 inclusive. They must be removed
within six months unless the Applicant takes an appeal under Section 44 of the
Patent Act.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hill , Quebec
this l4th. day of September, 1979
Agent for Applicant
Smart & Biggar
Box 2999, Stn . D
Ottawa, Ont.