COMMISSIONER'S DECISION
Adequacy of Disclosure - Perinone Dyestuffs
The issue was whether applicant had sufficiently identified the dyestuffs
to warrant claiming them. There were sixteen examples illustrating
starting compounds, formulae, dye color, chemical analysis, and melting
points. In this case that was considered sufficient to justify claiming
the compounds within the scope of claim 1.
Rejection reversed.
*************
Patent application 178,122 (Class 260-246.1), was filed on August 3,
1973, for an invention entitled "Perinone Dyestuffs And Process For
Preparing Them." The inventor is Helmut Troster, assignor to Farbwerke
Hoechst Aktiengesellschaft. The Examiner in charge of the application
took a Final Action on March 15, 1978, refusing to allow it to proceed
to patent. Applicant requested a Hearing to present further arguments
but, on reviewing the prosecution of application 178,122, we have
concluded such a Hearing is not necessary.
The application is directed to dyestuff compounds which are in fact
isomeric mixtures. These compounds are prepared in a conventional manner
and are useful in dyeing various synthetic materials.
Claim 1, recited below, gives the scope of the monopoly sought.
Dyestuffs consisting of the mixture of isomers of the
formulae
(See figure I)
(See figure II)
wherein R1 is hydrogen, alkyl with 1 to 20 carbon atoms,
alkoxyalkyl or alkoxycarbonyl each with 1 to 4 carbon atoms,
benzyl, alkoxycarbonyl with 1 to 20 carbon atoms or phenyl,
R2 is alkoxycarbonyl with 1 to 20 carbon atoms, cyano,
alcanoyl, alkoxyalkoxycarbonyl each with 1 to 4 carbon atoms,
carbonamido, phenylcarbonamido, mono- or dialkylcarbonamido
with 1 to 8 carbon atoms or cyclohexylcarbonamido, R3 and R4
are identical and are hydrogen or alkoxy with 1 to 4 carbon atom
atoms or R3 is alkoxy with 1 to 4 carbon atoms and R4 is
hydrogen and R is phenylthio which may be substituted by one
or two chlorine or bromine atoms, alkyl, alkoxy, carbalkoxy,
alkylsulfonyl groups each with 1 to 4 carbon atoms or a cyano,
trifluoromethyl or nitro group; naphthylthio, pryidinethio,
benzimidazolyl-2-thio, benzoxazolyl-2-thio, benzthiazolyl-2-
thio or an amino group of the formula
<IMG>
wherein R5 and R6 are hydrogen, alkyl or hydroxyalkyl with
1 to 4 carbon atoms or phenyl, or together are piperidine,
morpholine or piperazine.
In the Final Action, the Examiner refused all the claims on the grounds that
there wasn't sufficient disclosure to warrant granting the monopoly defined
by the claims. The following comments, extracted from the Examiner's report,
outline his position:
The compounds claimed have not been identified and there is
not one single identifying characteristic in the entire
specification of the compounds named and claimed.
There is not one single quantitative result qualifying the
utilizable properties of the compounds claimed and there is not
one single embodiment described as required by Section 36(1)
and Rule 25.
The compounds which have not been prepared and the compounds
whose characteristics (identifying chemical, physical and
utilizable properties) are not known remain equally unknown
for the person skilled in the art.
The Examiner maintained that indicating the color the dyestuff gave to a
substrate was not sufficient disclosure of the property of the compounds
themselves to properly identify them, or to indicate that they had really
been prepared. He suggested th at physical characteristics of the compounds,
such as a "chromaticity diagram" would be necessary, and that this
property should be given for a few representative compounds selected from
the broad class of compounds and also for the specific compounds claimed.
Responding to the Final Action, Applicant argued that the requirements called
for by the Examiner in the Final Action were not in conformity with the practice
of the Patent Office for patents issued in the dyestuff art. To support that
contention, he cited a list of patents, including some of his own, in which
the products are identified generally by formulae, dyeing characteristics
on a substrate, and method of preparation. He further argued as follows:
Thus, Examples 1 to 10 and 64 to 69 clearly describe the
starting materials, the amounts taken of such materials, the
reaction conditions, the formulae of the isomeric dyestuffs
obtained and certa in properties of the dyestuff, namely,
that it colours certain materials a particular colour with very
good fastness properties. Typical of these examples is
Example 1 where the formulae of the dyestuff components of the
isomeric mixture is set out on page 9. This isomeric mixture
is described as crystallizing in golden-yellow crystals. On
polyester fabrics brilliant greenish-yellow dyeings were
obtained having a good fastness to light and to sublimation.
If this were not enough the constitution of the product is
confirmed by reference to elemental analysis figures - see
page 9, lines 16 and 17.
It may be noted that it is a relatively simple exercise to calculate elemental
analysis figures once a structural formula has been provided. The following
statement taken from Applicant's response illustrates the position which he has
adopted.
"Applicant considers it abundantly clear that when the colour of the dyeing on
a material, e.g. polyester, has been given, this means that the dyestuff was
prepared and that it was tested for its utility as a dyestuff on that material."
In the present case the number of compounds covered by claim 1 is quite large,
and doubtless this has given rise to the Examiner's concern that the invention
is speculative rather than factual. However, there are sixteen examples which
describe in some detail how various representative products are prepared, giving
such things as the starting materials, quantities used, chemical analysis,
structural formulae, colour, colour produced on fibers, and melting points.
In seventy-three other instances the disclosure indicates the structural formula
and colour of compounds prepared. From the extent of this disclosure we
ourselves are satisfied that the Examiner's concerns are unfounded, or at the very
least that there is not sufficient reason for rejection.
Furthermore, the processes to prepare the new compounds are relatively
straight-forward, and there is no suggestion that there would in fact be any
difficulty in preparing them as the Applicant directs.
We are consequently persuaded that the subject matter of present claims 1
to 7 is allowable. We believe, however, that the structural formulae given
in the specification should be amended to show that the ring structures are
benzoidal, as was done in the corresponding U.S. Patent 320662. We also
note another apparent error in claim 1 which should be corrected. In it
R1 is defined in one place as being alkoxycarbonyl with 1 to 4 carbon atoms,
and in another as alkoxycarbonyl with 1 to 20 carbon atoms.
Our recommendation is that the final action should be withdrawn, and that
claims 1 to 7 should be allowed if amended as suggested above.
G. Asher
Chairman
Patent Appeal Board, Canada
Having considered the prosecution of this application and the recommendation
of the Patent Appeal Board, I now direct that the rejection be withdrawn,
and that the prosecution be resumed. Applicant should make the corrections
called for within six months of the date of this decision.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 12th. day of March, 1980
Agent for Applicant
Fetherstonhaugh & Co.
Box 2999, Stn. D
Ottawa, Ont.