IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENT
Patent application number 550,479, having been rejected under
Subsection 47(2) of the Patent Rules, the Applicant has asked
that the Final Action of the Examiner be reviewed. The rejection
has consequently been considered by the Patent Appeal Board and
by the Commissioner of Patents. The findings of the Board and the
ruling of the Commissioner are as follows:
Applicant's representative
Riches, McKenzie & Herbert
2 Bloor Street E., Suite 2900
Toronto, Ontario
M4W 3J5
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
patent application number 550,479 (Class 260-452) which was filed
on October 28, 1987 for an invention entitled "GLYCOLATE ESTER
PERACID PRECURSORS". The inventors are Ronald A. Fong, Sheldon N.
Lewis, Richard J. Wiersema and Alfred G. Zielske and the
application was assigned to The Clorox Company. The Examiner in
charge issued the Final Action on November 15, 1991 refusing
claims 1, 9, 13, 23, 25, 34 and 45 on a variety of grounds and
the Applicant replied on May 15, 1992 requesting a review by the
Commissioner of Patents and an oral hearing before the Patent
Appeal Board. Consequently an oral hearing was held on July 13,
1994 at which Mr. B. Latham of Riches, McKenzie & Herbert
represented the Applicant, Mr.R.B. Price and Mr. H. Koenig
represented the Patent Branch and the Board was comprised of
Mr.P.J. Davies as chairman and Mr.M. Wilson and Dr. M. Howarth as
members.
The subject matter disclosed in the application relates to a new
class of peracid precursors and compositions useful in providing
efficient bleaching of textiles over a wide range of wash
temperatures, but particularly at low temperatures of less than
50·C. When one of the peracid precursors of the invention is
combined with a source of hydrogen peroxide the reaction results
in the formation of a peracid and under certain circumstances
unique to the invention in the formation of a mixture of
peracids. The structure and reactivity of the compounds are
unique in that higher yields of peracids can be obtained across a
broader pH range and temperature than conventional fatty acid
based bleach activators. The peracid precursors are also superior
to prior art compounds in that their effectiveness is not as
substantially tied to the hydrogen peroxide/precursor molar
ratio.
The application contains claims 1 to 46 directed to (i) novel
bleaching compositions comprising defined peracid precursors,
(ii) novel peracid precursors, (iii) novel peracids and (iv)
alkaline and alkaline earth salts of the novel peracids. Rejected
claims 1, 9, 13, 23, 25, 34 and 45 are as follows:
1. A bleaching composition comprising;
(a) a peracid precursor having the general structure:
<IMG>
wherein R is C1-20 linear or branched alkyl, alkoxylated alkyl, cycloalkyl, aryl,
alkylaryl, substituted aryl; R' and R" are independently H, C1-20 alkyl, aryl, C1-20
alkylaryl, substituted aryl, and NR3~~, wherein R~ is C1-30 alkyl; and L is a leaving
group selected from the group consisting of:
<IMG>
wherein Y and Z, which can be the same or different, are H, SO3M, CO2M,
SO4M, OH, halo substituent, -OR2, R~, NR3 4X, wherein M is an alkali metal or
alkaline earth metal counterion, R2 of OR2 is C1-20 alkyl, R3 is C1-4 alkyl, R4 of NR3 4 is
C1-30 alkyl and X is a counterpart ion thereto;
(ii) halide;
(iii) -ONR6, wherein R6 contains at least one carbon which is singly or doubly
bonded directly to N; and
(iv) <IMG> wherein R1~ is C1 10 alkyl; and
(b) a bleach-effective amount of a source of hydrogen peroxide.
9 The bleaching composition of clam 1 wherein L is -O-N-R6, wherein R6
contains at least one carbon atom which is singly or doubly bonded directly to N
13. A bleaching composition comprising:
(a) a peracid precursor having the structure
<IMGS>
wherein R is C1-20 alkyl, and L is a leaving group selected from the group
consisting essentially of substituted phenol, oxime, amine oxide, and oxyimide; and
(b) a bleach effective amount of a source of hydrogen peroxide.
23. A bleaching composition comprising:
(a) a compound which includes the substituent
<IMG>
wherein R is C4-17 linear, branched alkyl, alkylaryl, alkoxylated alley, and aryl
or substituted aryl; R' and R" are independently H, C1-20 alkyl, aryl, C1-20 alkylaryl,
substituted aryl, and NR~a+, wherein R a is C1-30 alkyl; and
(b) a bleach effective amount of a source of hydrogen peroxide; said composition
providing about 0.5 to 100 ppm peracid A.O. in aqueous media, said peracid A.O.
being provided by a mixture of the following structures:
<IMGS>
25. A peracid of the structure
<IMG>
wherein R is C1-20 linear or branched alkyl, alkoxylated alkyl, cycloalkyl, aryl,
alkyl substituted aryl; and R' and R" are independently H, C1-20 alkyl, aryl, C1-20
alkylaryl, substituted aryl, and NR~a+, wherein R a is C1-30 alkyl.
34. A peracid precursor of the structure
<IMG>
wherein R is a C1-20 straight or branched chain alkyl, alkoxylated alkyl,
cycloalkyl, aryl, alkyl substituted or aryl; R' and R" are independently H, C1-20 alkyl,
aryl, C1-20 alkylaryl, substituted aryl, and NR3a+, wherein Ra is C1-30 alkyl; and L is a
leaving group selected from:
<IMG>
wherein Y and Z are individually H, SO3M, CO2M, SO4M, OH, halogen, -
OR2, R3, or NR3 4X, wherein M is an alkali metal or alkaline earth metal counterion,
R2 of OR= is C1-20 alkyl, R3 is C1-6 alkyl, R4 of NR3-4 is C1-30 alkyl, X is a counterpart
ion, and Y and Z can be the same or different;
(b) -ONR6, wherein R6 comprises at least one carbon which is singly or
doubly bonded directly to N; and
(c)
<IMG>; wherein R18 is C1-10 alkyl.
45. The alkali and alkaline earth salts of the peracid
<IMG>
wherein R' and R" are independently H, C1-20 alkyl, aryl, C1-20 alkylaryl,
substituted aryl, and NR3a+, wherein Ra is C1-30 alkyl.
In the Final Action claims 1, 9, 13, 23, 25, 34 and 45 were
rejected With the remainder of the claims being declared
allowable. The following extracts from the Final Action show the
objections to the claims made by the Examiner:
Claims 1, 13, 23, 25, 34 and 45 remain rejected under Section 34(2) of the Patent Act
as being indefinite. The use of the term substituted without any indication of what
the substituent may be, does not define tenth adequate specificity that which applicant
has disclosed.
..... ..
Claim 23 remains rejected under Section 34(2) of the Patent Act as being indefinite
because the expression "a compound which includes the substituent
<IMG>
is vague and indefinite. The scope of this expression cannot be determined with
certainty without reference to the disclosure. Moreover, this expression is so broad
that it covers every possibility of this radical being bonded to any compound, many of
which applicant has not taught or can predict with certainty.
.. .....
Claims 1, 9 and 34 remain rejected under Section 34(2) of the Patent Act as being
indefinite because the scope of the expression "R6 contains at least one carbon which is
singly or doubly bonded directly to N" is indeterminable. The complete structure of
the radical is left to conjecture as the said expression fails to recite sufficient elements
for proper determination of scope. Moreover, this expression is so broad that it
embraces all possible means without qualification, and, is therefore broader in scope
than the teaching of the disclosure (see page 16).
There are therefore three objections to the rejected claims with
more than one objection applying to more than one claim in some
cases. For instance claims 1 and 34 are rejected because they
both contain the expression "substituted" and the expression
"ONR4" The Board also notes that, whilst the remaining claims
were declared to be allowable, some of them nevertheless contain
the same expressions that the Examiner has objected to in the
Final Action in the sense that they depend on the rejected
claims; thus claims 2, 3, 9 and 46 contain the expression "ONR6,
whilst claims 4 to 12, 24, 30, 39 and 46 all refer to the term
"substituted". The Board will therefore proceed on the basis that
the objections made by the Examiner apply to these claims as
well.
At the conclusion of the Final Action the Examiner brought the
attention of the Applicant to minor errors in claims 13 and 34
which he suggested be corrected, i.e. that the presence of the
word "essentially" in claim 13 made the claim ambiguous and that
the word "or" should not appear in the expression "substituted or
aryl" used in claim 34. In a separate response filed on May 15,
1992 the Applicant submitted new claim pages with the above
corrections made. At the hearing the Applicant also submitted
further proposed amendments to correct other not previously
noticed typographical errors in claims 24 and 46, detailed as
follows:
Claim 24, line 2 to replace "butter" by -buffer-- and to replace "impact by --
impart-, and
claim 46, line 2 to replace "substituted aryl" by --R' and R"--
Since the above amendments are of a minor nature the Board sees
no reason why they should not be made and therefore recommends
that the new claim pages provided by the Applicant be entered.
Turning now to the basis of the Final Action there are three
issues to be determined by the Board namely: (1) whether or not
the term "substituted" as used in the claims is broad and
indefinite, (2) whether or not the expression "R6 contains at
least one carbon which is singly or doubly bonded directly to N"
is indeterminate in scope and (3) whether or not the use of the
term "a compound which includes the substituent
<IMG>
in claim 23 is vague and indefinite.
Turning to the first grounds of objection, i.e. the use of the
term "substituted", the Board notes the term is used in several
different situations throughout the claims. In claims 1, 13 and
23 which claim bleaching compositions comprising two constituents
the use of "substituted" occurs in the definition of the groups
R, R' and R" which form part of the peracid precursor which is
one of the constituents of the claimed bleach composition, in
claim 25 in the definition of the specific peracids claimed, in
claim 34 in the definition of the specific peracid precursors
claimed, and in claim 45 in the definition of the alkali and
alkaline earth metal salts of the peracids claimed. It therefore
appears to be the Examiner's position that the term "substituted"
is inherently broad and indefinite wherever it occurs in the
claims and whatever is claimed in the claims be it compounds or
compositions. As the Applicant has noted there are other
expressions used in the claims which might have been objected to
on similar grounds such as the term C1-20 alkyl used throughout
the claims; however the Examiner has zeroed in on the term
"substituted" as being inherently indefinite.
In the Final Action the Examiner has argued that a person skilled
in the art would not be able to ascertain the scope of the term
without making reference to the disclosure for completeness and
clarity. The Examiner stated that:
Applicant states in part, at page 2 of his response of August 13, 1991:
~... because of the full teaching of the disclosure, particularly in reference to
the use of the term "substituted", the skilled man with his expected knowledge
would know what is meant by the term "substituted" and what substituents
were appropriate". (paragraph 1; emphasis added)
Applicant's statement indicates that in order to determine the scope of the expression
"substituted", a skilled person in the art must refer to the disclosure to determine what
the substituents are. This meaning is supported by applicant's statement in paragraph 2
wherein he states, in part, "The teachings assist the skilled man in the art to select
appropriate substituents...". Therefore, applicant has argued that reference to the
disclosure for completeness and clarity is permissable; however, examiner disagrees.
The claims must be clear, distinct, and independent of the disclosure as required by
Section 34(2) of the Patent Act.
In its response dated May 15, 1992 the Applicant has submitted
that the Examiner is incorrectly paraphrasing the Applicant's
statements in that the Applicant is not stating that it is
necessary to refer to the disclosure to determine the scope of
the term "substituted" but rather that there is nothing in the
disclosure or claims that would be inconsistent with what the
person skilled in the art with his expected knowledge would
understand as being the meaning of the term.
In construing the term "substituted" one can refer to dictionary
definitions of the term, thus Webster's Third New International
Dictionary, 1968 defines substituted as:
"put in the place of another; appointed by a person to take the place of himself or
another or of something else and esp. to act in his own stead or to act on the
happening of a particular event in the stead of another; appointed by substitution;
having been subjected to a substitution reaction or having some of its parts replaced <
alcohol is a substituted water > < methylamine is a substituted ammonia >.
The International Encyclopedia of Chemical Science, 1964 defines
a substituted compound as:
A compound derived from a parent by substitution, e.g., toluene from benzene by
substitution of methyl for hydrogen. Derivatives of this type are often spoken of as
substituted benzenes, substituted naphthalenes, substituted phenols, substituted amines,
etc.
whilst The Condensed Chemical Dictionary defines substitution as
Any chemical reaction in which one element replaces another in a compound.
Chlorination of benzene to produce chlorobenzene is a typical example; in this case
chlorine replaces hydrogen in the benzene molecule.
From the dictionary definitions it is seen that the term
"substituted" has a very broad meaning and as used in the
application in the expression "substituted aryl" can be clearly
taken to encompass any substituent that may be attached to an
aryl ring. Whilst this would obviously include a theoretically
incalculable number of specific embodiments this in the opinion
of the Board does not necessarily render the term inherently
indefinite. As the Applicant pointed out at the hearing a person
skilled in the art would easily recognize whether any particular
group falls within the scope of "substituted aryl" so that the
expression is not in fact indefinite in scope. The Board is
therefore of the opinion that the term "substituted" is not
inherently indefinite since it has a clear and specific meaning
to a person skilled in the art. In view of this clear meaning in
the art it is not therefore necessary to refer to the disclosure
for the definition of the term.
In presenting its case the Applicant has referred to several
court decisions, such as the Supreme Court decision in Burton
Parsons Chemicals Inc. et al. v. Hewlett-Packard (Canada) Ltd. et
al. 17 C.P.R. (2d) 97. In this case Burton Parsons had patented a
cream to be used in taking electrocardiograms, the purpose of the
cream being to provide a good electrical connection between the
electrodes of the machine and the body. The cream was claimed as
follows:... An electrocardiograph cream for use with skin contact
electrodes and compatible with normal skin, comprising a stable
aqueous emulsion that is anionic, cationic or non-ionic and
containing sufficient highly ionizable salt to provide good
electrical conductivity. In declaring the claim valid Pigeon, J.
delivering the judgment of the court stated, at page 104, that:
In my view, the rights of patentees should not be defeated by such
technicalities. While the construction of a patent is for the Court, like that of any
other legal document, it is however to be done on the basis that the addressee is a man
skilled in the art and the knowledge such a man is expelled to possess is to be takes
into consideration. To such a man it must be obvious that a cream for use with skin
contact electrodes is not to be made up with ingredients that are toxic or irritating or
are apt to stain or discolour the skin. The man skilled in the art will just as well
appreciate this necessity if the cream to be made is described as "compatible with
normal skin" as if it is described as containing only ingredients compatible with
normal skin. The situation here is completely unlike that in either the Minerals
Separation case or in Soci‚t‚ des Usines Chimiques Rh“ne-Poulene et al. v. Jules R.
Gilbert Ltd. et al. (1968), 55 C.P.R. 207, 69 D.L.R. (2d) 353, [1968] S.C.R. 950.
In those cases the object of the patent was some substances of a definite chemical
composition: xanthates in the first, substituted diamines in the second. Unfortunately
for the patentees, the claims covered at the same time some xanthates which would not
geld the desirable result in one case, and, in the other, some isomers which would
not be therapeutically valuable. This is what was held fatal to the validity of the
patents.
and further, at page 106, that:
It is stressed in many cases that an inventor is free to make his claims as narrow as he
sees fit in order to protect himself from the invalidity which will ensue if he makes
them too broad From a practical point of view, this freedom is really quite limited
because if, in order to guard against possible invalidity, some area is left open
between what is the invention as disclosed and what is covered by the claims, the
patent may be just as worthless as if it was invalid. Everybody will be free to use the
invention in the unfenced area. 1t does not seem to me that inventors are to be looked
upon as Shylock claiming his pound of flesh. In the present case, there was admittedly
a meritorious invention and Hewlett-Packard, after futile efforts to belittle its
usefulness, brazenly appropriated it. It was in no way misled as to the true nature of
the disclosure nor as to the proper methods of making a competing cream. The
objections raised against the claims really are that, except those pertaining to Borne
specific embodiments of the invention, the others are so framed as to cover every
practical embodiment, leaving to the man skilled in the art, the task of avoiding
unsuitable materials in the making of the mixture, a task which any man skilled in the
art ought to be able to perform without having to be told because any unsuitability
depends on well-known properties. No unexpected or generally unknown unsuitability
was proved or even suggested, which makes this case quite unlike Minerals Separation
or Rh“ne-Poulenc.
The Applicant has also referred to the Federal Court, Trial
Division decision in Lubrizol Corporation et al. v. Imperial Oil
Ltd. 33 C.P.R. (3d) 1, affirmed by the Federal Court of Appeal 45
C.P.R. (3d) 449, where the Court referred to the reasoning in
Beecham Canada Ltd. v. Procter & Gamble Co. 61 C.P.R. (2d) 1.
This case dealt with infringement of a patent for improved
succinimide dispersant additives for use in preparing motor oils.
In construing the claims of the patent and coming to the
conclusion that they were valid and infringed the Court stated,
at page 12, that:
When examining the claims, the language of the claims is to be given a
purposive construction rather than a literal one. Further, the claims should not be
interpreted to exclude minor variants which, to the knowledge of the inventor and the
readers of the patent, would have no material effect upon the way in which the
invention works.
" A patent specification should be given a purposive construction rather that a
purely literal one derived from applying to it the kind of meticulous verbal
analysis in which lawyers are too often tempted by their training to indulge. The
question in each case is: whether persons skilled with practical knowledge and
experience of the kind of work in which the invention was intended to be used,
would understand that strict compliance with a particular descriptive word or
phrase appearing in a claim was intended by the patentee to be an essential
requirement of the invention so that any variant would fall outside the monopoly
claimed, even though it could have no material effect upon the way the invention
worked".
(Urie J. in Beecham Canada Ltd. v. Procter do Gamble Co. (1982), 61 C.P.R. (2d) 1
at p. 10, 40 N.R. 313 (F.C.A.), quoting Lord Diplock in Catnic Components Ltd. v.
Hill do Smith Ltd. (1980), 7 F.S.R. 60 at pp. 65-6. Emphasis is Urie J.'s)
Also, the claims are to be construed on the basis that the addressee is a person
skilled in the art, and the know ledge such a person is expected to possess is to be
taken into consideration: Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada
Ltd. (1974), 17 C.P.R. (2d) 97, 54 D.L.R. (3d) 711, [1976] 1 S.C.R. 555.
According to Urie J in Beecham, at p. 11:
....in construing the claims in a patent recourse to the remainder of the
specification is (a) permissible only to assist in understanding terms used in the
claims; (b) unnecessary were the words of the claim are plain and unambiguous; and
(c) improper to vary the scope or ambit of the claims.
In determining the scope of protection given to an invention in a patent, the
claims must be determined in the light of technical vocabulary used in the inventor's
field. The specification may assist in the analysis of the claims. As Rouleau J. stated
in Hy Kramer Canada Ltd. v. Lindsay Specialty Products Ltd. (1986), 9 C.P R. (3d)
297 (F C.T.D., at p. 310:
The claims, defining the scope of the Monopoly (see Harrison et al v. Anderston
Foundry Co. (1875-76), 1 ~pp. Cas. 574 at p. 581 (H.L.), are to be interpreted by
applying the common vocabulary of the art. In doing so, the specification, by its
phraseology and the drawings, by their illustrations, may assist but would not be
used to vary or enlarge the claims, especially if, as H.G. Fox wrote, supra, at pp.
217-8):
"....a claim is expressed in simple and direct language or in wide or general terms
whose meaning is plain and unequivocal. If the words of the claim are plain and
unambiguous it will not be possible to expand or limit their scope by reference to
the body of the specification. In such a case "recourse to the body of the
specification for explanation, qualification or extension is neither required nor
is legitimate."
The Board has considered the court decisions cited by the
Applicant and agrees that they support the Applicant's contention
that the Examiner's rejection of the claims is not sustainable in
law.
Whilst the Board does not believe that the term "substituted" is
inherently indefinite it does acknowledge that the term is
extremely broad. The question then becomes: Is it proper for the
applicant to be allowed to claim so broadly? The Applicant claims
that such broad claims should be allowed so that the Applicant
can obtain the protection to which it asserts it is entitled to.
The Applicant's position is that broad claims are necessary to
avoid the possibility that a subsequent party might be able to
claim specific embodiments of Applicant's invention that are
outside those claimed and therefore appropriate Applicant's
inventive concept. In this case the inventive concept resides in
the particular chemical structure disclosed rather than in the
specific values for the groups R, R' and R" attached to that
structure so that if the Applicant is forced to restrict the
definition of the R groups to those disclosed either in the
descriptive part of the disclosure or to those disclosed in the
specific examples it would be easy for another to find and claim
values for the R groups which are not claimed and therefore to
appropriate the essence of Applicant'a invention.
The Board notes at this point that whilst the Examiner refused
the term "substituted" he gave no indication what would be
considered an acceptable replacement for the term. Thus the
Applicant was given no guidance as to what the Examiner would
consider allowable. It is also noted that at no time was prior
art cited against any of the claims nor was there any finding
that any of the embodiments claimed could be considered to lack
utility. The Applicant's position is that it should be allowed to
claim broadly in the absence of any prior art or finding of non-
utility and it is pointed that the consequences of claiming too
broadly will be borne by the Applicant if the validity of the
patent is questioned. It is the Applicant's wish to claim its
invention as broadly as possible to adequately protect its
invention and it is prepared to take the consequences of any
possible overclaiming. However it is the Examiner's position that
the claims are clearly too broad and must be restricted.
In considering this question the Board must consider Section 40
of the Patent Act under which the application has been rejected.
Section 40 is as follows:
Whenever the Commissioner is satisfied that an applicant is not by law entitled to be
granted a patent, he shall refuse the application and, by registered letter addressed to
the applicant or his registered agent, notify the applicant of the refusal and of the
ground or reason therefor.
It is apparent therefore that before the Commissioner can reject
an application he must be satisfied that the applicant is not
entitled by law to a patent, i.e. that there has to be a
fundamental reason based in either the Patent Act itself or in
applicable jurisprudence for not granting a patent. This
principle was confirmed by the Supreme Court in its decision in
Monsanto Co. v. Commissioner of Patents 42 C.P.R. (2d) 161 where
it was stated, at page 177, that:
It will be noted that with respect to claim 9 all that is said to reject it as not
being based on a sound prediction is: "We are not satisfied that three specific
examples are adequate support for the breadth of the claim". On what basis is it so?
The Board gives absolutely no indication. If a refusal can be justified on that basis,
the right of appeal conferred by s. 4-4 of the Patent Act, R.S.C. 1970, c. P-4, is
useless in such cases.
44. Every person who has failed to obtain a patent by reason of a refusal or
objection of the Commissioner to grant it may, at any time within six months after notice
as provided for in sections 42 and 43 has been jailed, appeal from the decision of the
Commissioner to the Federal Court and that Court bas exclusive jurisdiction to hear and
determine such appeal.
Although the report of the Board is quite lengthy, in the end with respect to claim 9
all it says after stating the principle with which I agree, is that a claim has to be
restricted to the area of sound prediction and "we are not satisfied that three specific
examples are adequate". As to why three is not enough nothing is said. In my view
this is to give no reason at all in a matter which is not of speculation but of exact
science. We are no longer in the days when the architecture of chemical compounds
was a mystery. By means of modern techniques, chemists are now able to map out in
detail the exact disposition of every atom in very complex molecules. It, therefore,
becomes possible to ascertain, as was done in Olin Mathieson, the exact position of a
given radical and also to relate this position to a specific activity. It thus becomes
possible to predict the utility of a substance including such radical. As this is a matter
of general knowledge among scientists, it will be readily apparent to a competent
person that if a patent covers only a few of the substances which yield the desired
result, all he has to do is to prepare another which will have the same properties. The
report of the Board indicates that it is aware of this. However, it gives no indication
of the reasons for which it was not satisfied of the soundness of the prediction of
utility for the whole area covered by claim 9. Evidence had been submitted in the
form of affidavits based on scientific principles, it does not take issue with those
principles, it just says: "We are not satisfied that this is adequate". In my view this is
insufficient because, if accepted, it makes the right of appeal illusory. In this respect it
is important to note that s. 42 of the Parent Act reads:
42. Whenever the Commissioner is satisfied is not by law entitled to be granted a
patent he shall refuse the application and, by registered letter addressed to the applicant
or his registered agent, notify the applicant of such refusal and of the ground or reason
therefor.
I have emphasized by law to stress that this is not a matter of discretion the
Commissioner has to justify any refusal As Duff, C J., said in Vanity Fair Silk Mills
v. Commissioner of Patents, [1938] 4 D. L. R 657, [1939] S C R. 245 at p 246.
No doubt the Commissioner of Patents ought not to refuse an application for a patent
unless it is clearly without substantial foundation.
and further, at page 179, that:
........ ........... ...In the instant case, the Board, in spite of a complete absence of
any evidence of unsoundness of the prediction, deny the claims and would in the end
limit them to the area of proved utility instead of allowing them to the extent of
predicted utility. In my view this is contrary to s. 42 of the Patent Act.
Under that section the Commissioner is instructed to refuse the patent when
"satisfied that the applicant is not by law entitled" to it. Here what he has said in
approving the decision of the Board is in effect "I am not satisfied you are entitled to
it". In my opinion the Commissioner cannot refuse a patent because the inventor has
not fully tested and proved it in all its claimed applications. This is what he has done
in this case by refusing to allow claims 9 and 16 unless restricted to what had been
tested and proved before the application was filed If the inventors have claimed more
than what they have invented and included substances which are devoid of utility,
their claims will be open to attack. But in order to succeed, such attack will have to
be supported by evidence of lack of utility. At present there is no such evidence and
there is no evidence that the prediction of utility for every compound named is not
sound and reasonable.
Applying the above principle to the present case the Board has
come to the conclusion that it has not been shown that the
Applicant is not by law entitled to a patent.
Furthermore the Monsanto case, supra, also shows that an
applicant for a patent may make a broad claim to a group of
compounds based on a smaller group of specific examples if there
is a sound prediction that the members of the broad group will
all exhibit the same properties as the members of the smaller
group and there has been no evidence of any lack of utility. The
findings of the court in this respect are illustrated by the
following quotation from page 175:
.....................As to para. 2, I find it in line with observations made in the
judgment of this Court in Burton Parsons v. Hewlett-Packard, supra, (at pp. 106-7
C.P.R., pp. 564-5 S.C.R.). After a third paragraph which is of no relevance because
it deals with compulsory licences for drug patents, Graham, J., said (at p. 193):
Where, then, is the line to be drawn between a claim which goes beyond the consideration
and one which equiparates with it? In my judgment this line was drawn properly by Sir
Lionel when he very helpfully stated in the words quoted above that it depended upon
whether or not it was possible to make a sound prediction. If it is possible for the
patentee to make a sound prediction and to frame a claim which does not go beyond the
limits within which the prediction regains sound, then he is entitled to do so. Of course,
in so doing he takes the risk that a defendant may be able to show that his prediction is
unsound or that some bodies falling within the words be has used have no utility or are old
or obvious or that sore promise he has made in his specification is false in a material
respect; but if, when attacked, he survives this risk successfully, then his claim does not
go beyond the consideration given by his disclosure, his claim is fairly based on such
disclosure in these respects, and is valid.
I have quoted again the passage quoted by the Board because I consider the last
sentence of the paragraph of some importance as it does clearly indicate what is meant
by a "sound prediction". It cannot mean a certainty since it does not exclude all risk
that some of the area covered may prove devoid of utility. It thus appears to me that
the test formulated by Graham, J., involves just two possible reasons for rejecting
claims such as those in issue.
1. There is evidence of lack of utility in respect of some of the area covered;
2. It is not a sound prediction.
In the present case the Examiner has presented no evidence of
lack of utility for any of the embodiments covered by the term
"substituted" nor has it been shown that it is not a sound
prediction to say that all of the embodiments covered by the term
"substituted" will have the same properties as the embodiments
described in the specific examples. The Board therefore believes
that the Monsanto case supports the Applicant's position that the
claims should be allowed.
At the hearing the examiner now in charge of the application
referred to the decision in Noranda Mines Ltd. v. Mineral
Separation North American Corp. 10 C.P.R. 99 to support his
contention that the claims should be refused. The examiner
believes that the term "substituted" is inherently indefinite so
that reference to the disclosure is necessary in order to
properly define its scope as used in the claims. Since the
disclosure in its definition of the type of groups covered by the
term "substituted" is allegedly indefinite the claims are
likewise indefinite. However since the Board has found the term
"substituted" not to be inherently indefinite the Board finds the
Noranda Mines v Mineral Separation case not to be applicable in
this particular respect. The case is relevant in another respect
however in that it confirms that a claim is invalid if it
includes embodiments that plainly lack utility: thus the claims
in question were held to be invalid because they included
reference to xanthates some of which were known at the time to be
useless in the claimed process. In the present case there has
been no suggestion that any of the embodiments covered by the
term "substituted" lack utility so that in the opinion of the
Board the claims cannot be rejected on those grounds.
In addition no prior art has been cited which could narrow the
scope of the claims, there has been no finding that it is not a
sound prediction that all of the groups covered by the term
"substituted" will not be useful [see Monsanto, supra], and no
finding that a person skilled in the art would not be able to
determine what groups to select to produce operable combinations
[see Burton-Parsons, supra] and no finding that any of the
embodiments lack utility [see Noranda Mines, supra]. The Board
therefore recommends that the rejection of claims 1, 9, 13, 23,
25, 34 and 45 as being indefinite for using the term
"substituted" be withdrawn.
As presently written claim 13 defines leaving group L as, inter
alia, "substituted phenol" and at the hearing the Applicant
indicated that it wished to replace that definition with one of
the following proposed amendments detailed on page 8 of the
submitted pages:
B. "phenol, substituted phenol"
C. "phenol, phenoxide, substituted phenoxide" or
D. "adopt paragraph of claim 1 (a)(i), namely:
(See formula 1)
wherein Y and Z, which can be the same or different, are H, SO3M, CO2M,
SO4M, OH, halo substituent, -OR2, R3, NR3 4X, wherein M is an alkali metal or
alkaline earth metal counterion, R2 of OR2 is C1-20 alkyl, R3 is C1-6 alkyl, R4 of NR3 4 is
C1-30 alkyl and X is a counterpart ion thereto.
While the Board has decided that the term "substituted" is not
open to rejection in this case it nevertheless considers that
alternative D is the most preferable alternative out of the three
amendments proposed since it is the one which is most consistent
with the definition of leaving group L in claim 1. In the Board's
opinion alternatives B and C are somewhat inaccurate in that they
refer to "phenol" or "phenoxide" rather than to the more correct
"phenoxy" radical.
Turning now to the rejection of claim 23 as being indefinite. The
Applicant has characterised the Examiner's rejection as being
more a rejection based on the claim being a claim to the
compounds themselves rather than one to a group of compositions.
It is the Applicant's argument that since it is a combination of
two components that are being claimed it is permissible to define
component (a) in a more functional manner than would normally be
the case. Thus in choosing component (a) a person skilled in the
art would be able to make a proper selection from the various
possibilities and avoid useless or inoperative embodiments. In
the Board's opinion this case closely parallels that of the
Burton Parsons case, supra and therefore the Board considers the
claim allowable. Again the Board notes that no prior art has been
cited against the claim, nor has there been any finding of lack
of utility nor any finding that it is not a sound prediction that
any compound having the designated substituent will not produce
the desired result. In claim 23 all that is required of the
missing part of the compound claimed is that it act as a
substrate for the inventive substituent and not interfere with
the reaction of that substituent with the source of hydrogen
peroxide. Also in the Board's opinion if the Applicant is
required to limit the claim to the specific embodiments it may
allow others to take the essence of the invention by choosing
groups outside those actually claimed. In sum as was said when
discussing the term "substituted" the applicant should be
allowed to claim as broadly as possible in the absence of any
prior art, finding of lack of utility or finding of a lack of
sound prediction. Since none of the above conditions prevail with
regard to the claim the Board recommends that the rejection of
this claim also be withdrawn. In view of this there is no need to
consider the proposed amendments to the claim submitted at the
hearing.
With respect to the rejection of claims 1, 9 and 34 as being
indefinite because the scope of the expression "R6 contains at
least one carbon which is singly or doubly bonded to N" is
indeterminable the Board is of the opinion that the rejection is
proper for the following reason. The Applicant by defining the
group R6 in the group ONR6 in the way it has done so has rendered
the claim inherently indefinite. Thus when R6 comprises a carbon
atom singly bonded to N the ONR group is not fully defined as
there should be another group attached to the nitrogen group to
satisfy its trivalent nature. In other words one is left guessing
as to what other group needs to be attached to the nitrogen
group, i.e. one has the group (See formula 1) where the ? is indeterminate
and not defined in the disclosure. While the Board appreciates
that the Applicant is probably attempting to claim the disclosed
groupings O-N=C and (See formula 2) these are not the groups actually
claimed. For this reason the Board believes that the Examiner's
rejection must be sustained. However the alternative wording
suggested by the Applicant on page 9 of its submission: to wit "a
leaving group selected from the group comprising oxime, oxyimide
and amine oxide " avoids this indefiniteness and the Board
recommends that it should be adopted.
In conclusion the Board recommends that:
1. the minor amendments to claims 13, 24, 34 and 46 previously
discussed be made,
2. the rejection of claims 1, 9, 13, 23, 25, 34 and 45 as being
indefinite for the use of the term "substituted" be withdrawn
3. claim 13 be amended to replace the definition of leaving group
as "substituted phenol" by the wording given as amendment D on
page 8 of Applicant's proposed amendment pages
4. the rejection of claims 23 for its definition of component (a)
of the composition claimed be withdrawn, and
5. claims 1,9 and 34 be amended by replacing the definition of
the group R6 in the group ONR6 as being comprised at least carbon
which is singly or doubly bonded directly to N be replaced by the
wording shown in alternative B on page 9 of Applicant's proposed
amendment pages.
P.J. Davies M. Howarth M. Wilson
Acting Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and recommendations of the Patent
Appeal Board and consequently order that the following
recommendations of the Board be implemented:
1. the minor amendments to claims 13, 24, 34 and 46 previously
discussed be made,
2. the rejection of claims 1, 9, 13, 23, 25, 34 and 45 as being
indefinite for the use of the term "substituted" be withdrawn,
3. claim 13 be amended to replace the definition of leaving group
as "substituted phenol" by the wording given as amendment D on
page 8 of Applicant's proposed amendment pages,
4. the rejection of claims 23 for its definition of component (a)
of the composition claimed be withdrawn, and
5. claims 1,9 and 34 be amended by replacing the definition of
the group R6 in the group ONR6 as being comprised at least carbon
which is singly or doubly bonded directly to N be replaced by the
wording shown in alternative B on page 9 of Applicant's proposed
amendment pages.
Under the provisions of Section 41 of the Patent Act, the
Applicant has six months within which to appeal this decision to
the Federal Court of Canada.
A. McDonough
Acting Commissioner of Patents
Dated at Hull, Quebec
this 16th day of February 1995