Commissioner's Decision
Novelty, New use of Known Material: Substrates Treated with Technetium-99
The material described in the application was found not to be new, and the
discovery of a new use did not add the dimension of novelty to the treated
articles. It was noted that the allowability of the method claims should be
reassessed. Rejection affirmed.
******
This decision deals with Applicant's request for review by the
Commissioner of the Final Action on application 268,698 (Class
31-34), entitled METHOD FOR THE PREVENTION OF FOULING AND CORROSION
UTILIZING TECHNETIUM-99. The inventor is Carl B. Wootten. The
Examiner in charge issued a Final Action on March 26, 1980 refusing
to allow claims 16 to 33 of the application to proceed to patent.
The application relates to a method for the protection of substrates
subject to biological fouling or corrosion, which applies an effec-
tive coating of Technetium - 99 or compounds or alloys thereof to
the substrate to be protected.
In the Final Action, the Examiner rejected claims 16 to 33 which are
directed to Technetium - 99 treated articles, as lacking invention
in view of the following references, but indicated that the other
claims, i.e. method claims 1 to 15, appear to be allowable.
United States Patents 3,374,157 Mar. 19, 1968 Box
3,510,094 May 5, 1970 Clark
Publication J. Am. Chem. Soc. Vol. 77, p.2658 (1955)
The Box patent relates to the electrodeposition of Technetium-99 as
a smooth, adherent deposit on the surface of a selected metal sub-
strate.
The Clark patent relates to a means and method of controlling the
magnitude and energy level of radioactive emissions from a surface.
One example given is an aerodynamic body which has a beta emitting
radioactive material applied thereto by one of several means, e.g.
electroplating, and then coating such surface first with an N-type
semiconductor and then in turn applying a P-type coating to form a
P-N junction diode. Thereafter, current control is applied to the
P-N junction to vary the beta emission. Figure 1 of this patent
illustrates the structure.
<IMG>
The article in J.Am.Chem.Soc., Vol. 77, p.2658, describes inhibition
characteristics of Technetium under corrosive conditions.
In the Final Action the Examiner stated (in part):
* * *
The rejection of claims 16-33 is maintained, because the
claims lack invention in view of the cited art. The
references disclose articles having a coating of Technetium-99
on their surfaces. The applicant also admits that articles
coated with Technetium-99 are known and taught in the prior
art. (see page 7 lines 7-19 of the disclosure, and applicant's
letter of December 13, 1979 on page 1). Applicant's alleged
invention is a new use, i.e., simultaneous protection from
both corrosion and biological fouling, of a previously known
article. One may not patent a known article with the restric-
tion that it is to be used for a particular purpose. Further-
more, a claim to a known article in a particular environment
does not render the said article new.
The rejection of claims 16-33 is maintained because they are
contrary to Rule 44 of the Patent Rules (formerly Rule 43).
Claims 16-33 represent an undue multiplicity of claims which
are not necessary to protect the alleged invention.
Once a new method of use of a known article is claimed, no
more protection is gained by claiming that article in a parti-
cular environment or physical shape. Under Rule 44 no more
claims shall be allowed than are necessary. The
Commissioner's Decision published in the Patent Office Record
of Jan. 10/78, pages XIV-XXI, is pertinent to the present
rejection of claims 16-33, because it is directed to the
refusal under Rule 43 (now Rule 44) of an undue multiplicity
of claims.
* * *
In response to the Final Action, the Applicant argued, (in part):
To repeat, the prior art does not recognize that a coating of
Technetium-99 or Technetium-99 containing compounds or alloys
will protect a substrate simultaneously from both corrosion
and biological fouling. Because the prior art does not recog-
nize this discovery, it is submitted that there is no basis at
all in the applied references supporting the rejection of
claims 16 to 33 on the basis of their lack of invention from
which it is gathered that the Examiner means that he considers
the invention to be obvious in view of the applied references,
that is the invention as claimed in claims 16 to 33.
Clearly, there are no facts of record in this file which sup-
port such a position. The references do not anticipate any of
Claims 16 to 33 and any one of the references when combined
with common general knowledge fails to teach applicant's
invention and in fact there appears to be no support for any
common knowledge showing that it is to be expected that the
coating would protect a substrate simultaneously from both
corrosion and biological fouling.
As for the rejection of the Claims on the basis of undue
multiplicity, there is already of record a reasoning in
support of the need for product claims. It is recognized that
applicant has discovered a new use for a known composition.
However, the discovery has lead to a new composition as
claimed in Claims 16 to 33 and therefore applicant believes
that he has a right to claim the discovery in the form of a
new composition as well as in the form of a method in order
adequately to protect his rights provided far under the Patent
Act. It is not unknown in practice before your office to per-
mit the claiming of compositions where a discovery resides in
a new use. The most common practice in this regard exists
with respect to Section 41 cases where one discovers a new
pharmaceutical use for a known compound and your office per-
mits that discovery to be claimed as a composition consisting
of the active ingredient and a carrier. It is submitted that
we have a parallel here and that the Claims 16 to 33 do not
constitute an undue multiplicity simply because they would not
necessarily be infringed by the same actions.
* * *
The issue before the Board is whether or not claims 16 to 33 are
directed to a patentable advance in the art. Claim 16 reads:
An article of manufacture resistant simultaneously to both
biological fouling and corrosion, said article comprising a
body having a surface which is exposed to a fluid environment
when the article is in use, said surface being formed by a
composition subject simultaneously to both corrosion and
biological fouling when in said fluid environment, and a coat-
ing of Technetium-99, its alloys, or compounds, on said sur-
face of said composition, the coating being present in an
amount sufficient to simultaneously inhibit both growth of
organisms and corrosion on said surface when it is in contact
with the fluid environment.
We find that the article in the publication J. Am. Chem. Soc. gives
clear direction that Technetium is effective as a corrosion inhi-
bitor under corrosive conditions. From the Box patent, we are pro-
vided with information concerning the electroplating of technetium
on the surface of a metal substrate. The Box patent also states
that Technetium-99 is a low energy beta emitter. The Clark patent
discloses a particular use of a beta emitting radioactive material
with P and N type coatings to obtain a P-N junction diode covering
the beta emitting substance. We also find that Applicant's
disclosure admits that technetium has been used for preventing
corrosion of metal substrates, and makes reference to the publication in
J.Am. Chem. Soc., supra. From that information it is apparent that the
material Applicant describes in his application is not new.
One of the requirements made in Section 2 of the Patent Act is that an
invention must be new. In this instance however, as stated above, we find
that the material is not new, and consequently that the subject matter of
claims 16 to 33 inclusive lacks novelty. The additional discovery of the
corrosion inhibitor as an anti-fouling agent does not add to the product
the dimension of novelty required by the Patent Act.
To conclude, we find that claims 16 to 33 are directed to known technetium-
treated articles, and these claims fail because of lack of novelty. We
recommend that the decision in the Final Action to refuse claims 16 to 33
be affirmed.
While they were not rejected in the Final Action, we note that the method
claims of the application are in effect directed to the same use that the
article claims define, and that the range of thickness of the coating in
the method claims has been described in the art of record. Further we note
that various ways of applying technetium to a metal substrate have been
discussed in the prior art. We think that whenever prosecution is resumed,
the Examiner should reassess the allowability of the method claims.
G.A. Asher
Chairman
Patent Appeal Board, Canada
I concur with the reasoning and findings of the Patent Appeal Board. Accord-
ingly, I am not prepared to accept claims 16 to 33. The Applicant has six
months within which to submit an appropriate amendment or to appeal my
decision under the provisions of Section 44 of the Patent Act.
Agent for Applicant
J.H.A. Gari‚py
Commissioner of Patents Scott & Aylen
170 Laurier Ave. W.
Dated at Hull, Quebec Ottawa, Ont.
this 16th. day of December, 1981