“Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider al- lowed claims in other applications or patents.”
How later courts described this case
- “Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider al- lowed claims in other applications or patents.”
- one must consider the practical motivation of one of ordinary skill to make a new compound, in light of the properties or uses the compound would be expected to have if made
- “[n]o common-properties presumption rises from the mere occurrence of a claimed compound at an intermediate point in a conventional reaction yielding a specifically named prior art compound”
Written by the judges who cited it.
The opinion
BALDWIN, Judge,
concurring.
Although I agree with the discussion in the majority opinion as well as the resulting decision, it seems necessary to emphasize what the opinion does not say.
The majority opinion wisely does not ossify the area of chemical compound obviousness into a single requirement that the pri- or art compound and the claimed compound have “common properties.” Indeed, the precursor-product rationale applied by the examiner and the board in this case would be exemplary of the actions taken by one having ordinary skill in the art if some additional practical reasons were provided for recovering the claimed precursor. See In re Stemniski, 444 F.2d 581 , 58 CCPA 1410, 170 USPQ 343 (1971). For instance, it is my understanding that certain compounds having utility as explosives or rocket fuels are only prepared immediately pri- or to use from specific, and chemically stable, precursors. The fact that the precursor compounds do not have the common explosive property is the very reason that the stable precursor would have been obvious from the product.
In the instant case, no practical reason is found in Beard et al. for chemically pausing in the reaction sequence and recovering the precursor alkyl-thio compounds nor is there any indication that those compounds were, in fact, isolated and used as starting materials.
Accordingly, the decision of the board is properly reversed.