COMMISSIONER'S DECISION
Compound and composition. ~lant Growth Regulating Agents. A new compound
and a composition thereof mixed with acceptable carriers, useful for plant
growth regulation, 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withdrawn.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 376,206 (Class 260-328.9)
filed April 24, 1981. It is assigned to Shell Canada Ltd. and is entitled
PHENYLAMINO (IMINO)-ACETONITRILE PLANT GROWTH REGULATING AGENTS. The
inventors are E. Haddock and W.J. Hopwood.
The Examiner in charge issued a Final Action on June 6, 1985 refusing to
allow claims 1 to 10 to remain in the application with claims 11 to 16.
Claims 11 to 19 have been indicated to be allowable.
The application relates to a plant growth regulating composition including
a carrier, and a compound of the general formula I or an acid addition salt
thereof;
<IMG>
The X and Y together represent a bond, and X represents hydrogen or an
alkyl group, and Y represents a hydrogenation atom or an acyl group derived
from a carboxylic acid. The ring Het represents a furyl group, a thienyl
group, an alkyl furyl group or an alkyl thienyl group. The group Ar is
selected from a phenyl group, a halophenyl group containing one or more
halogen atoms, a haloalkylphenyl group, an alkylphenyl group, or an
alkoxyphenyl group. The compounds of general formula I have plant growth
regulating properties when applied as a compound or composition to the
plant, preferably, for example to soybean crops at the midway stage of
filling of the pods. Any of the carriers regularly used in agricultural
compositions may be used.
The Examiner rejected claims 1 to 10, directed to herbicidal compositions,
in view of Gilbert v Sandoz 64 C.P.R. (1971) 14, 8 C.P.R. (2d) (1973) 210,
and Agripat v The Commissioner of Patents 52 C.P.R. (2d) 229. He reasoned
the mixture of the compounds of claims 11 to 16 with an agriculturally
acceptable carrier would represent "no further inventive step", In
commenting on the Supreme Court decision of Shell Oil Company v The
Commissioner of Patents of November 2, 1982, and the arguments based
thereon by the Applicant, the Examiner said, in part, as follows:
. . .
The finding of the Supreme Court is set out on Page 16 as
following: "I find no obstacle in Section 36 or any other
provision of the Act to the grant of a patent to the appellant
in 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 in
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 compounds
and the compositions in the same application.
In developing her argument in Shell, Wilson J. page 13 on, re
Hoechst and Agripat 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 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 in
the decision rendered by the Federal Court in Agripat.
The applicant's attention is directed to Chapter 8.05.04 of
the Manual of Patent Office Practice which reads as
follows:
"in view of the Shell Oil v Commissioner of Patents
decision, when an inventor has invented a new chemical
compound, he may claim either the compound or the compound
in admixture with suitable carriers"
In presenting reasons why his application contains patentable subject
matter, the Applicant argued, in part, as follows:
. . .
The rejection based on Sandoz v. Gilcross is submitted to be
unsustainable. Without any doubt at all, the decision in that
case is governed by the particular constraints imposed on an
Applicant by the terms of Section 41(1) of the Patent Act. In
Shell v. The Commissioner, in addition to various other points
noted by the Examiner, a unanimous Court clearly ruled that law
developed within the ambit of Section 41(1) has no
applicability to situations not governed by those statutory
provisions. This Application being concerned with plant growth
regulators is not governed by Section 41(1) and hence is beyond
the reach of the Sandoz v. Gilcross decision.
The rejection of herbicidal composition claims 1 to 10 in view
of Agripat v. Commissioner of Patents on the ground that "there
is no further inventive step in the mixture of the compounds
defined in claims 1 to 10 with an agriculturally acceptable
carrier" flies in the face of the express finding of the
Supreme Court of Canada in Shell at page 19 of the judgement of
the Court:
"... the appellant's invention in the case of
the new compounds did not stop with the
creation of the compounds and the patenting
of the compounds would not give it protection
for its idea. The mixture of the compounds
with the appropriate adjuvants was necessary
in order to embody the idea in practical
form. It cannot therefore be said that in
this case there is no inventive step involved
in mixing the compounds with carriers appro-
priate for their application to plants. It
is true, as counsel for the Commissioner
submitted, that once it is decided that these
compounds are to be applied to plants, no
inventive step is involved in selecting the
appropriate carriers; they are common know-
ledge in the field. But I think this is to
miss the point. A disembodied idea is not
per se patentable. But it will be patentable
if it has a method of practical application.
The appellant has shown a method of practical
application in this case."
. . .
It is clear that the election implied by Chapter 8.05.04 of the
Manual of Patent Office Practice is the election referred to at
page 12 of the Shell judgement "whether to claim for the new
compounds or for the compositions containing them" which
election the Court found was open to an applicant in a non-
Section 41(1) case.
. . .
The Court clearly was aware that it was open to the applicant
to apply for the per se compound claims in a divisional
application. The Court also recognized implicitly that the
appellant's right to the grant of her se compound claims in a
divisional application would involve the determination of
questions which were not before the Court in the Shell appeal.
In applicant's submission the sole effect of those comments in
the judgment of the Supreme Court is to make it clear that
nothing in the judgment would preclude the applicant, if so
advised, from pursuing its right to obtain the grant of per se
compound claims in a subsequently filed division application.
There is a further aspect of this Application which the
Examiner does not discuss. The compound definition in claim 11
is narrower than that given for the active substances in claim
1. The limiting proviso at the end of claim 11 is not present
in claim 1.... The parallel between the application considered
by the Supreme Court in Shell and this case is clear: in both
the invention disclosed can be characterized as follows:
"The appellant has discovered that compounds
having a specific chemical structure have
useful properties as plant growth
regulators. Although some of these compounds
were already known, their usefulness for this
particular purpose was not known". (Shell,
at page 12).
And further at page 21:
"...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. 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 not before
us, the appellant having abandoned such a
claim at an early stage of the proceedings."
The corresponding subordinate element of the applicant's
invention in the present case is the group of new compounds
defined by allowed claim 11.
The official letter appears to suggest that the presence in the
application of claim 11 (and claims 12 to 15 which are directed
to processes of making the new compounds) provides grounds for
rejection of "herbicidal composition" claims 1 to 10.
The Manual of Patent Office Procedure as quoted by the Examiner
is no authority (as is made clear in its forward).
Shell is not authority for such a proposition since it
expressly avoided commenting on what the situation would have
been if the per se new compound claims had been contained in
the application before the Court.
The relationship of claims 1 to 10 on the one hand, and claims
11 to 16 on the other is not such as to give rise to a
direction pursuant to s. 38(2) that the applicant "limit his
claims to one invention only" having regard to the
characterization by the Supreme Court of Canada of the per se
new compound claims as being for a subordinate element of the
same invention as that to which the composition claims are
directed.
The issue before the Board is whether or not claims 1 to 10, directed to
herbicidal compositions, are allowable in the same application as claims 11
to 16 which are directed to the new compounds that may be used in the
compositions. Claims 1 and 11 read:
1. A plant growth regulating composition which comprises an
agriculturally acceptable carrier and, as active ingredient, a
compound of formula I, or an agriculturally acceptable acid addition
salt thereof:
(See formula I)
in which: Het represents a furyl group, a thienyl group, an alkyl
furyl group or an alkyl thienyl group;
Ar represents a phenyl group, a halophenyl group containing one or
more halogen atoms, a haloalkylphenyl group, an alkylphenyl group, or
an alkoxyphenyl group;
either X represents hydrogen or an alkyl group and Y represents a
hydrogen atom or an acyl group derived from a carboxylic acid;
or X and Y together represents a bond.
11. A compound of the general formula I, or an agriculturally
acceptable acid addition salt thereof:
(See formula II)
in which: Het represents a furyl group, a thienyl group, an alkyl
furyl group or an alkyl thienyl group;
Ar represents a phenyl group, a halophenyl group containing one or moe
halogen atoms, a haloalkylphenyl group, an alkylphenyl group, or an
alkoxy phenyl group;
either X represents hydrogen or an alkyl group and Y represents a
hydrogenation atom or an acyl group derived from a carboxylic acid,
or X and Y together represent a bond;
provided that if either Y represents a hydrogen atom and X represents
a methyl group, or Y represents a hydrogen atom and Het represents an
unsubstituted 2-furyl ring, then Ar represents a substituted phenyl
group.
One of the features disclosed and claimed by Applicant is the new use of
known compounds as plant regulators. Mme. Justice Wilson in Shell Oil,
supra, looked on this type of discovery as adding to available knowledge
relating to such compounds. In her view such recognition of previously
unknown properties constituted a "new and useful art". She felt that the
combination of the compound possessing such new use with an adjuvant to
bring about the new use, need not in itself be novel '... where the
inventive ingenuity is in the discovery of the new use and no further
inventive step is required... in the preparation of the appropriate
compositions".
In addressing the Farbwerke Hoescht and the Agripat decisions, Mme. Justice
Wilson distinguished the Farbwerke Hoescht line of cases as falling within
Section 41, whereas Agripat did not. She felt that the Section 41 cases
did not represent 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 that this application is not governed by Section 41
with respect to the plant growth regulators of the application. He refers
to page 19 of the Shell Oil judgement for a discussion of the significance
of the practical application of the idea, which, in that application, was
the mixture of the compounds with appropriate adjuvants to obtain the
practical form. He stresses that his invention parallels the situation
adjudicated in Shell Oil, by pointing out his invention is the discovery
that a class of substances has hitherto unknown beneficial properties as
plant growth regulators. He notes too that some of his compounds happen to
be new.
We see that claim 1 sets out a plant growth regulating composition
comprising an agriculturally acceptable carrier, and a compound of formula
I or an agriculturally acceptable acid addition salt according to the
formula.
(See figure I)
We note too that each of the groups X, Y, Het, and Ar, are particularly
identified in the claim.
Claim 1 represents a very similar kind of situation referred to in Shell
Oil, the mixture of a compound with an acceptable carrier to provide a new
use, namely, as a plant growth regulating composition. We see no art has
been cited to show that the arrangement of claim 1 has been used for, nor
to show that the compound is known to possess, plant growth regulating
properties. From the direction given in Shell Oil, the discovery of the
new use for the compound points to the invention, and mixing it with an
appropriate adjuvant demonstrates the embodiment of the idea. We are
persuaded that claim 1 represents an inventive advance under Section 2 of
the Act, and, in the absence of any appropriate art showing such knowledge
existed may be allowable.
Applicant argues that the compound in claim 11 is narrower in its
definition than claim 1, in that the definition as defined for X, Y, and Ar
in claim 11 is not present in claim 1. He reasons too that the concept of
his main invention is the discovery that a class of substances has new and
unknown properties as plant growth regulators. He points to mere happen-
stance that some of the compounds possessing these properties are new.
The Examiner considers that mixing the compounds defined in claims 11 to 16
with an agriculturally acceptable carrier to obtain the composition in
claims 1 to 10, does not represent an inventive step. In Shell Oil, Mme.
Justice Wilson summed up the thrust of the appellant's arguments in that
case as follows:
"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 said:
I think he is entitled to receive it.
We believe that merely mixing the old or new compound within the scope of
Applicant's invention does not represent the full scope of the invention.
The overriding consideration however, must be to the kind of discovery that
Applicant has made and its relationship to the other aspects found in the
application. In our view, Applicant has presented in claims 1 to 10
acceptable subject matter for patent, a newly discovered means of
regulating plant growth that represents one of the aspects disclosed.
Claims 11 to 16, as they are in Applicant's own application do not
represent prior art, and therefore for that reason can not hinder the grant
of a patent for the subject matter of claims 1 to 10. Given that claims 11
to 16 may represent a subordinate element of Applicant's invention, we note
further that they have a restriction not found in claims 1 to 10.
Moreover, we find guidance in assessing claims 1 to 16 from the reasoning
developed in Shell Oil in referring therein to Lawson v The Commissioner of
Patents (1970) 62 C.P.R. 101 at 109:
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 view Applicant's invention, as expressed in claims 1 to 10, is art
of the means to achieving the end, as is the particular compound expressed
in claims 11 to 16. Each of these groups may recite various aspects,
however, when viewed in the overall concept of Applicant's inventive idea,
we find no meaningful distinction exists between them that would prevent
their acceptance in the same application.
We recommend that the rejection of claims 1 to 10 for not being directed to
the inventive concept expressed in claims 11 to 16, be withdrawn.
M.G. Brown
Acting Director
S. D. Kot
Patent Appeal Board Member
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 8th day of October 1986.
Smart & Biggar
Box 2999, Station D
Ottawa, Ontario
K1P 5Y6