COMMISSIONER'S DECISION
Compound and Composition. Herbicidal Compound and Composition. A new
compound, and a composition thereof mixed with acceptable carriers, useful
for herbicidal purposes, 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Rejection withdrawn.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 407,320 (Class 260 - 315.3)
filed July 15, 1982. It is assigned to May & Baker Ltd. and is entitled
N-PHENYLPYRAZOLE DERIVATIVES. The inventors are L.R. Hatton, E.W. Parnell,
and D.A. Roberts.
The Examiner in charge issued a Final Action on June 7, 1985 refusing to
allow claims 11 to 31 in the application with claims 1 to 10, and 32 to 55.
The application relates to a herbicidal composition including a carrier,
and a compound of the formula:
<IMG>
R12 to R15 represent, respectively, a chlorine atom, a hydrogen, fluorine
or chlorine atom, a hydrogen or fluorine atom, and, a hydrogen, fluorine or
chlorine atom. There is a proviso that when R14 is a fluorine atom, R15 is
a fluorine or chlorine atom, or, R12, R13, and R15 each represents a
fluorine atom and R14 is a hydrogen or fluorine atom. When R13 is a
hydrogen atom, R14 is preferably a hydrogen atom. The compounds are used
in formulations comprising a carrier that promotes applications to crops
for weed control.
Claims 11 to 31, directed to herbicidal compositions, are rejected in view
of Gilbert v Sandoz 64 C.P.R. (1971) ~~~, 8 C.P.R (2d) (1973) 210, and
Agripat v The Commissioner of Patents 52 C.P.R. (2d) 229. The Examiner
considers there is no "further inventive step" in mixing the compound
defined in these claims with with an acceptable carrier. The Examiner
contends the decision of Shell Canada Company v The Commissioner of Patents
of November 2, 1982 gives direction, and in making his rejection, 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 Section 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 in Shell, Wilson J. at page 13 on, re
Hoechst and Agripat says as follows:
"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 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 in the
decision rendered by the Federal Court in Argipat.
Applicant has stated on page 3 that "The Shell Decision has
established that compositions containing novel compounds are in
fact patentable". This is not so. ... There were no claims to
the novel compounds per se in the Shell case.
In Applicant's view, all claims are patentable in the same application, and
he argues, in part as follows:
The Shell Oil Decision 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 Court's decision or to the Applicants'
present case. Considering the above passage in the context of
the full decision, the 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). 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".
... (Applicant) is simply seeking to safeguard his position on
the basis of the fundamental difference between product claims
and herbicidal 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 disclosure of the compounds does not refer to
herbicidal utility, the product claim could be invalidated
whereas a herbicidal 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.
...
... The Applicants' present claims 11 to 31 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 Applicants
under Canadian practice to an unrestricted claim to the compounds
per se. The fact that their invention, based on the discovery of
herbicidal 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.
...
... It has, however, long been a feature of Canadian practice
that an Applicant could claim various aspects of the same
invention in a single application provided that the application
satisfied the requirements for unity of invention. ... In
Canadian, as in United States and British practice, claims of
progressively diminishing scope have always been allowed in a
single application. Such claims are generally directed to
preferred embodiments of the single invention claimed and
safeguard the Applicants' position in the event that the
invention in its broadest aspect subsequently proves to be old.
... 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 an unrelated 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.
...
It is respectfully submitted that, following the Shell 0i1
Decision, which has established the patentability of claims to
compositions containing novel compounds, claims to herbicidal
compositions naturally fall to be considered in the same way as
claims to methods of use.
...
... Both represent aspects of the same invention. Neither
involve the application of inventive ingenuity resulting in a
separate invention. Method of use claims have been previously
allowed in the same application as compounds claims and it is
respectfully submitted that, on the same basis, claims 11 to 31
are allowable in the present application.
The issue before the Board is whether or not claims 11 to 31, directed to
herbicidal compositions, are allowable in the same application as claims 1
to 10, and 32 to 55 which are directed to the new compounds, and a method
of use in a herbicidal composition. Claims 1 and 11 read:
1. N-Phenylpyrazole derivatives of the general formula:-
(see formula I)
wherein R12 represents a chlorine atom R13 represents a
hydrogen, fluorine or chlorine atom, R14 represents a hydrogen or
fluorine atom and R15 represents a hydrogen, fluorine or chlorine
atom, With the proviso that when R14 represents a fluorine atom,
R15 represents a fluorine or chlorine atom, or R12, R13 and R15
each represent a fluorine atom and R14 represents a hydrogen or
fluorine atom.
11. A herbicidal composition which comprises, as active
ingredient, at least one N-phenylpyrazole derivative of the
general formula depicted in claim 1, wherein R12, R13, R14 and
R15 are as defined in claim 1, in association with one or more
compatible herbicidally-accepted diluents or carriers.
After considering the Farbwerke Hoechst line of cases, and Agripat, Mme.
Justice Wilson noted in Shell Oil that the former fell within Section 41,
whereas Agripat did not. She felt that cases like Farbwerke Hoechst did
not stand for 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 desires to secure protection for his product claims and
herbicidal compositions. He reasons that if one or more compounds within a
product claim is later shown to be old, but there is no disclosure of
herbicidal activity for the old compound, his product claim may be
invalidated, but he would retain protection for his claim to the herbicidal
composition if it were present in his patent. He does not interpret Shell
Oil as establishing, either, an unqualified statement that there is no
inventive ingenuity in mixing a compound with a carrier, or, an
illustration that serves to prevent the claiming of the compound and the
composition claims in one application under the circumstances he outlines
above.
The Applicant points to Canadian practice which permits the claiming in one
application of various aspects of the same invention, for example, claims
of diminishing scope. He notes that his application presents three types
of claims having the same filing date. He stresses the three types are
aspects of the same invention based on his discovery of utility, and
concludes they should be permissible in one application.
In dealing with Applicants' concern that an old, later found compound may
invalidate his compound claim, we look to the following passage from Shell
Oil in which Mme. Justice Wilson summed up the Appellant's arguments in
that case:
"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.
In assessing Applicants' invention We are mindful of the discovery he has
made. This discovery relates to a means of controlling weeds in crops.
One aspect of this is found in the composition presented in claims 11 to
31, another is the compound described in claims 1 to 5, another is the
process defined in claims 7 to 10 for preparing the compound, and still
another is the process set out in claims 32 to 55 of applying the
composition defined in claim 11. We believe that mixing the new compound
Within the scope of Applicants' invention represents only one aspect of the
invention. We see another aspect of the invention is set out in the
process of applying the composition. In our view, Applicant has disclosed
various aspects related to controlling weeds in crops. The non-rejected ,
claims as they form part of the same application, may not be considered
prior art, and therefore present no obstacle to the grant of a patent for
claims 11 to 31. We are of the opinion the groups of claims in the
application may be considered as aspects of the same invention that are
permissible in the same application. It is noted that no prior art has
been cited, and we make no comments on the allowability of the claims.
Also pertinent to a determination of whether or not Applicants' various
groups of claims may be allowable together, is another portion of the
decision in Shell Oil. Mme. Justice Wilson looked to Lawson v The
Commissioner of Patents (1970) 62 C.P.R. 101 at 109, and considered with
approval the reasoning set down by Mr. Justice Cattanach in the following
passage:
In the earlier development of patent law, it was considered that
an 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.
In our opinion, claims 11 to 31 represent one aspect that forms part of
Applicants' invention and is so closely intertwined with the other aspects
for achieving Applicants' means for controlling weeds, that it may be
included in the same application as the non-rejected claims. We see no
meaningful distinction between the various aspects defined by the claims to
the compound, the composition, or the method of use that would prevent
their acceptance in the same application.
We recommend that the rejection of claims 11 to 31 for not being directed
to the same inventive concept in claims 1 to 10, and claims 32 to 55, be
withdrawn.
M.G. Brown S.D. Kot
Acting Chairman Member
Patent Appeal Board
I concur with the findings and the 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
Box 806, Station B
Ottawa, Ontario
K1P 5T4