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COMMISSIONER'S DECISION

 

   Support for  Claims, Secs. 41 & 36 - Benzenesulfonyl-ureas

 

   Applicant claimed several processes to prepare new medicines. It was held that

   several of the processes had not sufficiently adequately met the requirements

   of Sections 41 & 36. Rejection affirmed.

 

                              *************

 

   A hearing was held on June 18, 1980 to review the final rejection

   of patent application 178,117 Class 260-235.95. The applicant

   is Farbwerke Hoechst AG, assignee of R. Weyer, W. Aumuller,

   V. Hitzel and F.H. Schmidt. Mr. D.M. Rogers represented the

   applicant at the hearing. The application is directed to the

   preparation of certain benzene sulfonyl urea derivatives which

   are said to possess hypoglycemic properties, and to be useful in

   pharmaceutical preparations for lowering blood sugar levels.

 

   To illustrate the scope of the subject matter claimed, claim 1

   is reproduced below:

 

            1. A process for preparing a benzenesulfonyl-urea of

              the formula I

 

                        (See formula 1)

 

              wherein X represents a pyridyl, a pyrimidinyl, a

              quinolyl, a benzthiazolyl or a benzoxazolyl group

              which groups may be substituted by one or two methyl

              groups and which in  vicinal position to the nitrogen

              atom are linked to the rest of the molecule,

 

              R represents alkyl having 1 to 3 carbon atoms, R1

              represents alkyl having 3 to 6 carbon atoms, cycloalkyl,

              alkylcycloalkyl, cycloalkylalkyl, cycloalkenyl,

              alkylcycloalkenyl having each 5 to 9 carbon atoms,

              cyclolhexenylmethyl, chlorocyclohexyl, bicycloheptenylmethyl,

              bicycloheptylmethyl, bicycloheptenyl, bicycloheptyl,

              nortricyclyl, adamantyl and benzyl,

              in which

              (a) a benzenesulfonyl-isocyanate, benzenesulfonyl-carbamic

              acid ester, -thiolcarbamic acid ester, sulfonyl-urea,

sulfonyl-semicarbazide or -semicarbazone substituted in

the 4-position by the group

 

                  (See formula 1)

 

       is  reacted with an amine R1-NH2 or a salt thereof or a

sulfonamide of the formula  

                              <IMG>

 

            or a salt thereof is reacted with a R1-substituted

            isocyanate, carbamic acid ester, thiolcarbamic acid

            ester, carbamoyl halide or urea,

       (b) a correspondingly substituted benzenesulfonylisourea

       ether, -thiourea ether, - parabanic acid or haloformic

       acid amidine is split,

       (c) the sulfur atom in a benzenesulfonyl-thiourea

       substituted by the group

      <IMG>

       is replaced by an oxygen atom,

       (d) a correspondingly substituted benzenesulfinyl- or

            sulfenyl-urea is oxidized,

       (e) the radical

       <IMG>

       is introduced into a benzenesulfonyl-urea of the formula

       <IMG>

       in one or more steps,

       (f) a correspondingly substituted benzene-sulfonyl

       halide is reacted with a R1-substituted urea or an

       alkali salt thereof, or a correspondingly substituted

       benzenesulfinic acid halide or, in the presence of an

       acid condensation agent, a correspondingly substituted

       sulfinic acid or an alkali salt thereof is reacted with

       a N-R1-N' -hydroxy-urea.

    It may be noted that this process claim is directed to producing over

    140,000 different compounds and encompasses hundreds of thousands of

    separate processes for preparing them.

 

    The application also includes product-by-process claims corresponding

    to the alternative processes (a) - (f) claimed.

 

    The examiner rejected the following parts of the process claims:

 

            (i)   in claim 1 (a) references to sulfonyl urea, semi

                  carbazide and semicarbazone

            (ii)  in claim 1(b) references to parabanic acid, and

             halo formic acid amidine

            (iii) in claim 1 (c) the phrase "and in which water...

                  intermediate"

       (iv)  in claim 1 process variants (d), (e) and (f)

       (v)   the corresponding portions as they appear in

             claims 3, 5 and 7

 

      (vi) claims 9, 11 and 13

 

      His reasons for rejecting these  processes may be summarized

      as follows:

 

            These claims are rejected for lack of support in

            the disclosure in that the several process variations

            are not sufficiently described.

 

            The basis for the objection is found in Section

            41(1) and Section 36(1) of the Patent Act.

 

      The examiner discussed the requirements of Section 41(1) of

      the Act by saying:

 

            The provisions of Section 41(1) of the Act convey

            the importance of the process since the enactment

            prohibits claims to 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."

 

            The use of the phrase "particularly described and

claimed" immediately suggests a greater emphasis

              on the description necessary in the disclosure for

            the process. In fact in Boehringer and Sohn v.

            Bell Craig 1962 F.x. C.R. 201 at page 237 the judge

            felt that

                  "The only processes for the preparation of ...

                  which, in my opinion, can be said to be particularly

                  described anywhere in the specification are

                  those described in examples 2 and 9".

 

            In the same decision on appeal to the Supreme Court

            1963 S.C.R. 410 the court said at page 414

 

                  "The subsection (41(1)) was intended to place

                  strict limitations upon claims for substances

                  produced by a 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 ... "

                  (emphasis by examiner).

 

     The examiner then turned his attention to Section 36(1) of

     the Act, saying:

 

     In  discussing Section 36 (then Section 35) in

     R.C.A. v. Raytheon (1956 - 1960) Ex. C. R. 98

     at 109 the court indicated that the onus on the

     disclosure placed by the Section was both heavy

     and exacting. Thus at page 108

 

            "It is a cardinal principle of patent law

            that on inventor may not validly claim

            what he has not described. In patent law

       jargon it is said that the disclosures 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 ...".

     The court thereafter approved several passages,

     found in Mineral Separation v. Noranda Mines

     1947 Ex. C. R. 306, at page 316

 

            "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 invention as the inventor could

            at the time of his application."

     and, also at page 316

 

            "It must, not for example direct the use of

            alternative methods of putting (the invention)

            into effect if only one is practicable, even

            if persons skilled in the art would be likely

            to choose the practicable method"

 

     and at page 317

 

            "The description must also give all  information

            that is necessary for successful operation or

            use of the invention without leaving such result

            to the chance of successful experiment, and if

            warnings are required in order to avert failures

            such warning must be given".

 

     Another case of importance in assessing the sufficiency

     of description required to validly claim a process is

     the Sandoz v. Gilcross 1974 S.C.R. 1336 decision. In

     this case the Supreme Court upheld the Patent Office

     view that exemplification of a condensation involving

     a chloro ethane derivative together with a general

     description using the bromo-ethane derivative was

     sufficient to claim both bromo and chloro in the

     same process. Thus at page 1338 the court said       

 

"Claims 2 and 3 cover the same process using the

            chloro-ethane and bromo ethane amide respectively."

            (emphasis by examiner).

 

In applying the above criteria to the process of claim 1, the

examiner made the following comments, inter alia:

 

      Firstly, process variant, (d), (c) and (f) of claim

      I will be considered. These processes are not 

      exemplified but merely set down in general terms.

      As such they fail to meet the principles or tests

      discussed above. The disclorure fails to indicate

      the particular way in which these variations must be

      adapted to produce the desired result and therefore

      does not show  their  utility in the preparation of the

      compounds claimed. Furhter the disclosure does not

      show the practicability of such methods. There, is no

      indication of the specific reaction conditions which

      are necessary to successfully carry out the processes.

      In fact the disclosure invites a man skilled in the

      art to carry out experiments to ascertain the reaction

      pararmeters to enable him to make use of these processes.

 

      The correctness of this analysis of the disclosure

         regarding the above stated process variants is aptly

         shown when thw actual description in the disclosure is

         examined. The description is replete with what "may"

         be done e.g. "the reaction conditions ... may ... be

         modified ...with ... solvents or without solvents",

         "Depending on the nature ... a small yied ... may ...",

         "the expert will have no difficulty in synthesizing ...".

         Thus the disclosure is not a description of how to carry

         out the process but more of an invitation to try.

 

         Secondly, process variant 1 (a) and 1(b) will be

         considered.

 

         Claim 1 (a) encompasses the reaction  between a benzene

         sulfonyl - isocyanate                 

                  -carbamie acid ester                                            

                  -thiolcarbamic acid ester

                  -sulfonyl urea

                  -sulfonyl semicarbazide

               or -semicarbazone

 with the other half of the molecule R1-NH2 and the

 reverse procedure i.e.

          benzene sulfonyl amide with R1 - isocyanate                                                                                                                                           

                                         - carbamic acid ester

                                           etc.

 

Exemple 1 describes the process benzene sulfonamide with

the isocyanante.

 

Exemple 2 describes the process benzene sulfonamide-carbamic

acid ester with the amine.

 

Thus a complete description via the issocyanate and carbamic

acid ester is provided. From the Sandoz v. Gilcross

supra decision the thiol carbamic acid ester can be

considered as the same process involving the thio

analogue, no objection is made to them. However such

an extension cannot be made to the other groups i.e.

sulfonyl urea, semi-carbazide and  semicarbazone. These

cannot be considered to be the same process since in

effect they are a transmination i.e. the R1 NH2 replaces;

the urea NH2.

-6-

in the vein he found fault with process claims 1(b) and 1(c).

 

The examiner rebutted arguments presented by applicant in

previous amendments in the following manner:

 

In its response the applicant relied heavily on

the decision Ciba v. Commissioner 1959 S.C.R. 378.

In essence this case extends patentability to a

"classical" chemical process if the resulting product

is novel, useful and unobvious. The applicant

extends this principle to state that all "classical"

routes for preparing its new, unobvious drug are

patentable as long as the disclosure makes a reference

to them.

 

It is accepted that all the processes claimed in

claim 1 are "classical" i.e. chemical synthetic routes

which in themselves are known. However it is not

accepted that the Ciba decision overrides the statutory

requirements of Section 36 as enunciated above. In

fact in the Ciba decision the "classical" process

was fully described in the application so that

sufficiency of description was not the problem litigated.

Consequently the Ciba decision cannot be construed as

an invitation to ignore Section 41(1) and Section 36

of the Patent Act.

 

The applicant also drew attention to the Commissioner's

decision which resulted in Canadian Patent 1,011,738,

June 7, 1977. The penultimate paragraph of that decision

clearly distinguishes the disclosure of that application/

patent from the present one

 

"It is also important in our view that it be

clearly indicated in the original disclosure

that the process has been carried out and is

operative. A reference, to a "possible" process

for preparing the products would we think be

speculation, and not meet that test. In this

disclosure, however we find clear indications

that the process has been tried and operates.

For example in describing process (e) on page 7

of the specification the solvents used, the

temperatures employed, and information about the

reaction are given in some detail".

 

If one applies these sentiments to the present disclosure,

it is clear that there is insufficient description. The

processes are speculative i.e. repeated references to

what "may" be done, no details regarding solvent,

temperatures or reaction conditions.       

 Finally , the applicant refers to various patents,

 texts and articles where reference is made to some

 of the claimed processes. Since the applicant has

 to go elsewhere for presumably adequate descriptions

 of its processes this would indicate that the

 objections are truly well founded, i.e that the

 present disclosure is insufficient to support the

 claims. If on the other hand the texts are cited

 to show that the processes are "classical" i.e.

 known in themselves, but not applied to the instant

 reactants this point is accepted. However, this does

 not aid the applicant because as stated above this

 disclosure does not indicate how the applicant has

 reacted the particular reactants required in each

 instance to make the products of the alleged invention.

 

 Responding to the Final Action, applicant deleted the objectionable

 expression in claim 1(c) and gave his assessment of what is

 required under Section (1) and Section 36(1) of the Patent Act.

 

In his response he argued as follows:

 

 It should be remembered that the invention in

 question here is the discovery that the compounds

 have a particular utility and not in the process

 by which these compounds are produced. As in

 Ciba v. Commissioner of Patents (1959) S.C.R. 378,

 the process is patentable because of the utility of

 the products. The Examiner relies on section 41(1)

 of the Patent Act and points out that this section

 requires that products coming within the section

 may be claimed only  when prepared or produced by

the methods or processes of manufacture particularly

 described and claimed or by their obvious chemical

 equivalents. It is pointed out that this section

does not set forth a requirement for disclosure,

 but merely defines the type of claims which must

 be made in the case of compounds coming within section

 41(1). As indicated in the decision of the Supreme

 Court of Canada, in Boehringer v. Bell- Craig, (1963)

 S.C.R. 410, referred to by the Examiner, in the case

 of such products, the applicant must claim "that very

 process by which it is manufactured." However, it has

been made clear by the Supreme Court of Canada in

Sandoz v. Gilcross, (1974) S.C.R. 1336, that there is

no necessity under Section 41(1) to describe each

process claimed in full detail.

 It is submitted that section 41(1) merely sets

 forth requirements as to how products coming

 within the section must be claimed, and if the

 claims are in accordance with the requirements

 of the section, the sufficiency of the

 disclosure necessary to support such claims is

 the same as for any other invention. The

 requirements for disclosure are set forth in

 section 36(1) of the Patent Act, and it

 is submitted that this section merely requires

 that the disclosure be sufficient to enable one

 skilled in the art to carry out the invention

 claimed. This has been held to be the case

 consistently in a large number of court decisions.

 For exemple, in B.V.D. v. Canadian Celanese,

 (1936) Ex. C.R. 140, Mr. Justice MacLean held

 the following:

 

  "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

  experiments do not require any exercise of

  the inventive faculty".

 

  Dealing specifically with processes (a) to (f) of claim 1,

  applicant asserted that the specification contained a general

 description of these processes and that, further, the processes

 to which objection was made are well known to those skilled in

 art. For the purpose of demonstrating the latter be made

 reference to the patent literature such as Canadian Patent

 849,015. The basis of his argument is:

 

 It is submitted that the disclosure in the

 present case is sufficient to enable one skilled

 in the art to carry out each of the processes,

 and while all details of the actual method of

 applying the process to the particular starting

 materials may not be given, this would not

 require the exercise of any inventive faculty.

 

 Prior to the hearing, applicant submitted copies of certain

affidavits which were alleged to support his contention that

the disclosure was sufficient for a man skilled in the art to

use processes (d) and (f) to prepare the benzenesulfonyl ureas

claimed.

 

We have considered the arguments made at the hearing by Mr Rogers

as well as those raised during prosecution of the application.

 

It is clear from the preceding discussion that the issue to

be resolved is whether applicant has satisfied Section 36 of the

 Act and Section 41.

 

Applicant has argued that there is no necessity under Section

41 (1) to describe each process claimed in full detail. This

view is difficult to rationalize with the words used in Section

41 , viz; "particularly described" . In our view, this means that

the process must have been described in the disclosure sufficiently

so that there is clear indication than it has been carried out.

A mere reference to a process is not evidence that the process

has in fact been accepted.

 

The basis for applicant's conclusion appears to be Sandoz v.

Gilcross (supra) , but the factual situation there is different

from that now before us. In Sandoz the same process using a

chloro-or a bromo-ethane derivative was claimed with only the

chloro-ethane process specifically described. It was decided

that the claim for the process using the bromo-ethane derivative

was valid. However, we are dealing here with different processes

to make the same compound. There processes differ in part by

virtue of the different reactants used in processes (a) to (f)

of the claim and also by necessity for the different reaction

conditions in each of the processes. It is relatively easy to

predict the behaviour of other members of an homologous series,

such as the halogen ethane derivatives, from the behaviour of

one member of that series, whereas it is quite a different matter

to make predictions about the behaviour of the carbamic acid

derivatives from non-homologues. For example, it is known that

the simple carbamic or thiocarbamic acid esters are generally 

insoluble in water, whereas water is a useful solvent for urea

and carbazide.

 Applicants processes are neither "specifically described" or

"specifically referred to". A mere recitation that A is reacted

 with B does not come within the framework of the expression

"specifically referred to" (see Commissioner v Winthrop Chemical

 Co 7 C.P.R. 59 S.C. 1948).

 

 The words "particularly described" have been considered in

 Commissioner v Winthrop supra , at page 64 as follows:

 

 "According to the Oxford Dictionary "describe"

  means, inter alia, "to give a detailed or

 graphic account of" (which is said to be the

 ordinary current sense); "to set forth in

 delineation"; "to delineate". "Particular",

 by the same authority, means, inter alia,

 relating to or dealing with the separate

 parts, elements, or details of a whole;

 detailed, minute, circumstantial"; "a minute

 account, description or enumeration".

 (emphasis added).

 

  We find that the description in the disclosure of the rejected

 processes does not come within the purview of the above passage.

 

 There is no indication in the disclosure that the rejected

 processes have in fact been carried out. Such processes are

 merely  "possible to prepare the compounds. There

 is no description whatsoever of any reaction conditions, such as

 temperature, solvents, pH etc. There is even a hedging statement

 in the disclosure that some processes will not work (see page 6,

 line 18) Applicant has argued that a person skilled in the art

 would know what to do in those processes which are not

 "specifically described" but then suggests, in the disclosure, that

  such a nice person would not know whether a given process would produce

  the desired product. However, this person is described to try the

  other processes with the assurance that at least one of them will

  work. This shows that applicant is claiming processes which have

  not been tried, since he doesn't know which processes are operable

  to produce a given product.

  The affidavits submitted by applicant about process variants (d),

  (e) and (f) are alleged to demonstrate that the disclosure is

  sufficient to enable a chemist skilled in the art to carry out    

 these processes. However, the issue is not whether those skilled

in the art could carry out the invention by 1978 or 1980, when

the affidavits were filed, but by the date of filing the application

i.e. August 7 ,1972 given the present disclosure and the knowledge

of those skilled in the art at that date. It is noted that the

affiants are employees of the applicant, who would undoubtedly

be aware of this development in their firm by 1978 and 1980. Thus

it may take no ingenuity on their part and at that date to carry

out these processes. We do not believe that information which is

privileged to an applicant and his employees is satisfactory

criteria to show what those skilled in the art generally would

comprehend by the invention. We note that the affidavits do not

comply with the requirements of the Canada Evidence Act and

consequently are dubious value (of Kemanond v P.P.G. Industries,

F.C.C. April 2, 1980).

 

We referred at the start to the large number of compounds and

individual processes covered by the claims. By virtue of that

very number it is inconceivable that applicant prepared a

substantial proportion of the compounds, or indeed that a

substantial proportion would be useful medicaments. It is well

known that slight variations in molecular structure can produce

devastating changes in the medicinal activity of a chemical

compound . In the present case the core of the invention is

the product or products produced. The processes in themselves

are conventional, as applicant has demonstrated. Claim 1 covers

all the conceivable ways of making the product and for that

reason comes close to excluding anyone else from making the

compounds.

 It is a principle of patent law that an applicant may not claim

 anything not properly and adequately disclosed (see R.C.A.v

 Raytheon (1956-60) Ex. C.R. 98 at 108 & 109; Noranda Mines

 v. Mineral Separation (1949) Ex C.R. 306 @ 316; French's

 Complex Ore v. Electrolytic Zinc 1930 S.C.R. 462 at 470;

 B.V.P. v Canadian Celanese 1936 Ex. C.R. 137 and 1937 S.C.R. 22;

 Smith Incubator v Seiling 1937 S.C.R. 251; Gilbert v Sandoz

 (1971) 64 C.P.R. 7 at 42 - 45; and Rh“ne-Poulenc CIBA v Gilbert

  1966 Ex. C.R. 59 & 1967 S.C.R. 45.

 

  In Hoechst Pharmaceuticals v Gilbert (1965) 1966 S.C.R. 187 at

  731 the Court held the claims invalid for "preposterous overclaiming

   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."

 

   We believe 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 substances

   made by it do not possess the utility claimed for them. It

   should not be speculative, nor encompass large number of compounds

   which have never been prepared.

 

 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 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 be~

 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 less predictable

 that 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 uncharted 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 claim had never been made or tested by anyone.

 

 Objections of this nature are not, however, limited to

 pharmaceutical inventions, or even to chemical inventions. In

 the Matter of Abraham Lsau 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 circumstances 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 then 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 operating 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 mixtures, the specification listed some forty mixtures

 other than hydrocarbons. In the 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 consists 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 satisfied 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 Applicant's claim that the employment of their

 sulfolane solvents, of which they give in the

 specification a list of over one hundred, gave

 results which compare advantageously with other

 solvents hitherto used; fourthly, that the Applicants

 make clear that the methods of employing their

sulfolane 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).

 

 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 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 themselves that we can perceive any

concrete statements about processes really used. In our view

to allow the applicant to claim as widely as he proposes. To

do so would be to condone "arm-chair inventioneering" and "paper

chemistry" of the type censured in the decisions discussed above.

 

 We are of the opinion that in claim 1 processes (a) where it

 refers to sulfonyl urea, semicarbazide and semicarbazone,(b),

 where it refers to parabanic acid, and haloformic acid amide,

 and (d), (e), (f) and process claims 3,5,7,9,11, 13 lack

 sufficient support in the disclosure in view of the requirements

of both Section 36(1)  and Section 41(1) of the Patent Act. We

therefore recommend that these claims be refused, affirming the

rejection made by the examiner. We note that product claims

dependent on the refused process claims would also fall with the pro-

cess claims under the authority of the Commissioner v Winthrop supra.

 

Gordon Asher,

Chairman,

Patent Appeal Board, Canada

 I concur with the reasoning and findings of the Board, and

 reject claims 1, 3, 5, 7, 9, 11 and 18.

 

J.A.Brown

Acting Commissioner of Patents

 

Dated at Hull, Quebec

this 30th. day of December, 1980

 

 Agent for Applicant

 

Rogers, Bereskin & Parr

P.O. Box 313

Commerce Court Postal Station

Toronto, Ontario

M5L 1G1

 You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.