COMMISSIONER'S DECISION
Compound and Composition: Insect Growth Regulating Agent. A new compound,
and a composition thereof mixed with acceptable carriers, useful for
insect control, represent different aspects of the same invention and may
be allowable in the same application, absent prior art. Rejection withdrawn.
This decision deals with Applicant's request for review by the Commissioner
of Patents of the Final Action on application 393,867 (Class 260 - 466.05)
filed January 11, 1982. It is assigned to The Upjohn Co. and is entitled
SUBSTITUTED PHENACARBAMOYLBENZIMIDATES. The inventor is Stephen J. Nelson.
The Examiner in charge issued a Final Action on February 5, 1985 refusing
to allow claims 5, 6, and 9 in the application with claims 1 to 4, 7, and
8. Claims 1 to 4, 7, and 8 have been indicated to be allowable.
The application relates to an insect growth regulating composition
including a carrier, and a compound of the formula:
(See formula I)
X1 is from the group methyl, trifluoromethyl, chlorine, fluorine and
bromine, X2 is from the above group including hydrogen, R is alkyl 1 to 5
carbon atoms, X3 and R4 may be the same or different from the group
hydrogen, chlorine and bromine, X5 is from the group hydrogen, chlorine,
bromine, and trifluoromethyl, X6 is from the group cyano and nitro. There
is a proviso that when X1 and X2 are chlorine or X1 is fluorine and X2 is
hydrogen, then R, and X3 to X6 are respectively not 1-methylethyl,
chlorine, hydrogen, chlorine and nitro; when X1 is fluorine and X2 is
hydrogen then R, and X3 to X6 are respectively not 1-methylethyl, chlorine,
hydrogen, and nitro; when X1 is fluorine or methyl and X2 is hydrogen then
R, and X3 to X6 are respectively not ethyl, hydrogen, hydrogen, hydrogen,
and nitro; and, when X1 and X2 are fluorine then R, and X3 to X6 are
respectively not ethyl, chlorine, hydrogen, chlorine, and nitro. The
compound can be used for control of insects in the form of compounds, or in
formulations comprising a carrier that will promote application to insects,
objects, or situs.
The Examiner rejects claims 5, 6 and 9, directed to insecticidal
compositions, in view of Gilbert v Sandoz 64 C.P.R. (1981) 14, 8 C,P.R.
(2d) (1973) 210, and Agripat v The Commissioner of Patents 52 C.P.R. (2d)
229. He considers there is "no further inventive step" in mixing the
compound of claim 1 with an acceptable carrier. The Examiner feels that
the decision of Shell Canada Company v The Commissioner of Patents of
November 2, 1982 is relevant, and he says, in part, as follows:
...
The Shell Oil application presented a class of plant growth
regulant compounds which were both new and old. Claims were made
to the new compounds per se and to compositions containing both
the new and old compounds. Following a rejection of the
composition claims based on the Sandoz decision, Shell Oil
maintained claims to the compositions only. These claims were
rejected by the Patent Office.
The findings of the Supreme Court is set out on page 16 as
follows:
"I find no obstacle in s.36 or any other provision of the
Act to the grant of a patent to the appellant on these
compositions."
The next sentence reads:
"I make no observation, however, on whether or not the
appellant can succeed in a subsequent application for
patent on a subordinate element of its invention, namely,
the compounds themselves. This is not before us, the
appellant having abandoned such a claim at an early stage
of the proceedings."
Clearly, this portion of the Shell Oil decision does not give
guidance on the allowability of claims to both the compound and
the composition in the same application. In developing her
argument Wilson J. at page 13 under the heading "The new
compounds:" refers to "the Farbwerke Hoechst line of cases". She
continues her analysis of these cases as follows:
"It seems to me that Mr. Justice Heald was in error when he
stated that the Farbwerke Hoechst line of cases "are
indistinguishable on any valid ground from the case at bar"
and that the commissioner therefore "correctly...
interpreted and applied the principles in those cases" to
Agripat. They were, in my view, distinguishable in a very
material respect, namely, that they were all cases falling
within s.41 and Agripat was not. I do not think it is
possible to read those cases without concluding that one of
the reasons for the rejection of the composition claims in
those cases was that to allow them would permit the
applicants to avoid the impact of s.41 in respect of
substances clearly falling within it. I agree with counsel
for the appellant that these cases did not establish a
broad principle that compositions containing new compounds
mixed with an inert carrier were not patentable. They did
establish, however, that no inventive ingenuity is involved
in mixing a compound with a carrier. Accordingly, if the
compound is patented, there is no invention in the
composition. That proposition, in my view, makes eminent
good sense whether the substance is covered by s.41 or not
and I think it affords an adequate basis for the result
reached by the Federal Court of Appeal in Agripat."
"Agripat is, of course, distinguishable from the instant
case in that no claim is being made for the compounds in
this case."
Thus the Supreme Court clearly accepted the principle that if the
compound is patented, there is no invention in the composition
and, using this principle, looked with favour on the decision by
the Federal Court in Agripat.
...
The applicant argues that all claims are patentable in the same
application, presenting his reasons, in part, as follows:
...
On the basis of the Shell decision the Examiner would have to
allow either claims to the novel compounds or claims to
insecticidal compositions containing such compounds.
Claims to a method of controlling insects would be allowed in the
same application as either claims to the novel compounds or
claims to the compositions.
Thus, the allowability under Canadian practice of claims to (a)
novel compounds having insecticidal activity, (b) insecticidal
compositions containing such novel compounds in association with
known carriers and (c) a method of controlling insects by using
the compositions, is now established. The allowability of such
claims is not an issue in the present rejection. The Examiner is
prepared to allow claims to (a) and (c) above and would
presumably allow claims to (b) and (c) on the basis of the Shell
decision. The point at issue is whether or not claims to (a),
(b) and (c) can be allowed in a single application.
The Shell decision, as noted above, contains the statement
"Accordingly, if the compound is patented there is no
invention in the composition."
The rejection based on lack of invention in mere dilution of a
new compound with a carrier might appear to be supported by this
statement. However, the interpretation of this passage which the
Examiner effectively now seeks to adopt does not do full justice
to the Supreme Court's decision or to the applicant's present
care. Considering the above passage in the context of the full
decision, the Supreme Court was apparently referring to the case
where an applicant seeking to obtain a patent on compositions
containing an active compound in association with a carrier
already had a patent on the active compound. The words quoted
are, in effect, directed to a "double patenting" situation as the
expression is commonly interpreted under United States practice
(where an applicant cannot in an application of later date claim
an invention which is not patentably distinct from his own
invention already patented on an earlier application) or possibly
an overlap situation under Canadian practice. Without such a
provision, an applicant could file a series of applications on
successive dates based on the same discovery of utility, to claim
(a) novel compounds, (b) compositions containing them and (c) the
method of using the compositions. Such a series of applications
could have the effect of prolonging the term of patent protection
based on a single discovery of utility. An unfair advantage
might thereby be secured.
However, in the present application the three types of claims
have the same date. There is no question of "double patenting".
The applicant is not seeking to secure an unfair advantage by
extending the term of his monopoly by securing patents of later
dates based on the same invention. On the contrary, he is simply
seeking to safeguard his position on the basis of the fundamental
difference between product claims and insecticidal composition
claims. If, later in the life of the patent, one or more
compounds within a product claim are found to be old but the
prior art disclosure of the compounds does not refer to
insecticidal utility, the product claim could be invalidated
whereas a corresponding insecticidal composition claim could
stand. The simple statement, without any qualification, that
there is no inventive ingenuity involved in mixing a compound
with a carrier does not do justice to the distinction between
compound and composition claims just mentioned. There is clearly
an important difference between the two types of claims in the
circumstances outlined above.
Present claims 5, 6 and 9 are in fact directed to an aspect of
the invention claimed in claim 1. The disclosure of a utility
for the novel compounds entitles the applicant under Canadian
practice to an unrestricted claim to the compounds per se. The
f act that the invention, based on the discovery of insecticidal
utility for the compounds, can be claimed in various ways which
are closely associated with the discovery should not preclude the
inclusion of claims to separate aspects of the same invention.
...
... In Canada, prior to the Shell decision, the Patent Office
would accept in the same application claims to a compound and a
claim to a method for its use. However, when a claim to a
compound has been found allowable to the inventor in one
application, then claims in a different application of the same
inventor to methods of using that compound which are obvious from
the utility disclosed for the compound, and upon which utility
the patentability of the compound was predicated, are not
allowed. This practice follows the "double patenting" practice
of the United States Patent Office referred to above.
...
... It is believed that no meaningful distinction can now be
drawn between the allowability of method of use claims as just
discussed, and the allowability in the same application, of
claims to insecticidal compositions. Both represent aspects of
the same invention. Neither involve the application of inventive
ingenuity resulting in a separate invention. Method of use
claims have previously been allowed in the same application as
compound claims and it is respectfully submitted that, on the
same basis, clams 5, 6 and 9 are allowable in the present
application.
...
The issue before the board is whether or not claims 5, 6, and 9, directed
to insecticidal compositions, are allowable in the same application as
claims 1 to 4, 7, and 8 which are directed to the new compounds that may be
used in the compositions. Claims 1 and 5 read:
1. A compound of the formula:
<IMG>
wherein X1 is selected from the group consisting of methyl,
trifluoromethyl, chlorine, fluorine and bromine; X2 is selected
from the group consisting of hydrogen, methyl, trifluoromethyl,
chlorine, fluorine and bromine; R is alkyl of from 1 to 5 carbon
atoms; X3 and X4 can be the same or different and are selected
from the group consisting of hydrogen, chlorine and bromine; X5
is selected from the group consisting of hydrogen, chlorine,
bromine and trifluoromethyl; and X6 is selected from the group
consisting of cyano and nitro; with the proviso that when X1 and
X2 are chlorine or when X1 is fluorine and X2 is hydrogen then R,
X3, X4, X5 and X6 are respectively not 1-methylethyl, chlorine,
hydrogen, chlorine and nitro; with the further proviso that when
X1 is fluorine and X2 is hydrogen then R, X3, X4, X5 and X6 are
respectively not 1-methylethyl, chlorine, hydrogen, hydrogen and
nitro; and with the further proviso that when X1 is fluorine or
methyl and X2 is hydrogen then R, X3, X4, X5 and X6 are
respectively not ethyl, hydrogen, hydrogen, hydrogen and nitro;
and with the proviso that when X1 and X2 are fluorine, then R,
X3, X4, X5 and X6 are respectively not ethyl, chlorine, hydrogen,
chlorine and nitro.
5. Formulations for pest control comprising an adjuvant carrier
and as active ingredient a biologically effective amount of one
or more compounds of the formula:
<IMG>
wherein X1 is selected from the group consisting of methyl,
trifluoromethyl, chlorine, fluorine and bromine; X2 is selected
from the group consisting of hydrogen, methyl, trifluoromethyl,
chlorine, fluorine and bromine; R is alkyl of from 1 to 5 carbon
atoms; X3 and X4, can be the same or different and are selected
from the group consisting of hydrogen, chlorine and bromine; X5
is selected from the group consisting of hydrogen, chlorine,
bromine and trifluoromethyl; and X6 is selected from the group
consisting of cyano and nitro; with the proviso that when X1 and
X2 are chlorine or then Z1 is fluorine and X2 is hydrogen then R,
X3, X4, X5 and R6 are respectively not 1-methylethyl, chlorine,
hydrogen, chlorine and nitro; with the further proviso that when
X1 is fluorine and X2 is hydrogen then R, X3, X4, X5 and X6 are
respectively not 1-methylethyl, chlorine, hydrogen, hydrogen and
nitro; and with the further proviso that when R1 is fluorine or
methyl and X2 is hydrogen then R, X3, X4, X5 and X6 are
respectively not ethyl, hydrogen, hydrogen, hydrogen and nitro;
and with the proviso that when X1 and X2 are fluorine, then R,
X3, X2, X5 and X6 are respectively not ethyl, chlorine, hydrogen,
chlorine and nitro.
In the Shell Oil case, Mme. Justice Wilson considered the Farbwerke Hoechst
line of cases as falling with Section 41, whereas Agripat did not. She
noted that these Section 41 cases did not establish a broad principle that
"compositions containing new compounds mixed with an inert carrier were not
patentable". We learn from her remarks that regardless of whether a
substance is covered by Section 41 or not, when a compound is patented,
there is no invention in another application in the composition containing
that compound for the same use.
The Applicant argues he is attempting to safeguard his position concerning
the difference between product claims and insecticidal compositions. He
points out that if one or more compounds within a product claim is later
shown to be old but there is no disclosure of insecticidal activity for the
old compound, then his reasoning is that should the product claim be
invalidated, he would be assured of some protection if his claim to an
insecticidal composition were to remain. He believes Shell Oil provides
neither an unqualified statement that there is no inventive ingenuity in
mixing a compound with a carrier, nor an example that serves to limit the
claiming of the compound and the composition claims in one application in
the circumstances he outlines above.
The Applicant indicates that in his view of Canadian practice, it is
possible to claim various aspects of the same invention in one
application. He notes that a claim to a compound and a claim to its method
of use are acceptable in one application. He argues that claims to a
method of use and claims to insecticidal compositions are both
"...predicated on the same utility as claims to the compound per se." He
reasons no meaningful distinction can be drawn between these two types of
claims. He concludes they should be permissible in one application,
stressing they are aspects of the same invention.
We consider now, Applicant's concern that an old, later found compound may
fall within his composition claim. With respect to retaining claims to an
insecticidal composition having an old compound as an active ingredient, we
look to Shell Oil. Mme. Justice Wilson presented her views by summing up
the appellant's arguments in that case in the following passage:
"I recognize that these compounds are old; I acknowledge that
there is nothing inventive in mixing them with these adjuvants
once their properties as plant growth regulators have been
discovered; but I have discovered these properties in those old
compounds and I want a patent on the practical embodiment of my
invention".
She then concluded:
I think he is entitled to receive it.
We find direction from the above passage for the situation before us and
for the situation posing concerns to the Applicant. We believe it shows
that When an application describes that an old compound and a new compound
are each found to have the same properties, for example here as a growth
retardant for insects, there is an inventive purpose that interrelates them
within that application. We derive too from Shell Oil that when such
compounds are mixed with an appropriate adjuvant to provide a practical
embodiment of the invention, claims to the resulting compositions may be
permissible within the same application. We are persuaded claims to these
kinds of compositions should be viewed as aspects of the same invention.
We believe the overriding consideration in assessing Applicant's invention,
must be the overall discovery made by Applicant. In our view, mixing the
new compound within the scope of Applicant's invention represents but one
aspect, and not the full extent, of the invention. Applicant has
discovered a means of regulating insect growth and has expressed this in
claims 5, 6, and 9. The non-rejected claims, being in Applicant's own
application do not form part of prior art, and therefore they are not an
obstacle to the grant of a patent for claims 5, 6, and 9. We view the two
groups as aspects of the same invention. We note too that no prior art has
been cited, and we make no comments on the allowability of the claims.
We find further guidance in determining whether or not claims 5, 6, and 9
may be allowable with the other claims in the application, from Shell 0i1,
in the reasoning developed therein in view of Lawson v The Commissioner of
Patents (1970) 62 C.P.R. 101 at 109. Mme. Justice Wilson looked at the
reasoning set down by Mr. Justice Cattanach in the foll owing passage from
Lawson:
In the earlier development of patent law, it was considered that
and invention must be a vendible substance and that unless a new
mode of operation created a new substance the invention was not
entitled to a patent, but if a new operation created a new
substance the patentable invention was the substance and not the
operation by which it was produced. This was the confusion of
the idea of the end with that of means. However, it is now
accepted that if the invention is the means and not the end, the
inventor is entitled to a patent on the means.
We view claims 5, 6, and 9 as one aspect of Applicant's invention that
forms part of the means for achieving the end, just as the particular
compound expressed in claims 1, 2 and 7, and the particular method found in
claim 3, 4, and 8, are other aspects of the inventive means of the
application. When viewed in the overall concept of Applicant's inventive
idea, we find no meaningful distinction exists between the three aspects
defined in the claims to the compound, the composition, and the method of
use in relation to the invention disclosed, that would prevent their
acceptance in the same application.
We recommend that the rejection of claims 5, 6, and 9 for not being
directed to the same inventive concept in claims 1 to 4, 7, and 8, be
withdrawn.
M.G. Brown S.D. Kot
Acting Director Member
Patent Appeal Board
I concur with the findings and recommendation of the Patent Appeal Board.
Accordingly, I withdraw the rejection of the application and I remand it
for prosecution consistent with the recommendation.
J.H.A Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 9 day of October 1986
MacRae & Co., Alex E.
P.O. Box 806, Station B
Ottawa, Ontario
K1P 5T4