Opinion

In re Breslow

  • 616 F.2d 516
  • 205 U.S.P.Q. (BNA) 221
  • 1980 CCPA LEXIS 279
Court
Court of Customs and Patent Appeals
Filed
Feb 28, 1980
Status
Published
Author
Baldwin
On the bench
Baldwin, Maletz, Markey, Miller, Rich
Cited by
7 cases
Authority
More cited than 19.1%

The opinion

BALDWIN, Judge,

concurring.

Although I agree with the majority opinion that the mere fact a chemical compound is a “transitory intermediate” is insufficient basis, for excluding the compound from coverage under § 101, I feel constrained to comment on other issues presented by the appeal.

*523 First, it seems to me that the board confuses a couple of closely related topics in reaching its decision — those topics being the actual existence of the claimed compounds and the further “requirement” for their recovery. Recovery and purification of chemical compounds, for subsequent analysis, has long been desirable as a method for proving the existence of novel compounds. For instance, in some cases involving reduction-to-practice in an interference, it may be necessary to demonstrate their existence. Young v. Bullitt, 233 F.2d 347, 43 CCPA 932, 110 USPQ 55 (1956); Guinot v. Hull, 204 F.2d 281 , 40 CCPA 982, 97 USPQ 441 (1953). Recovery is only for the purpose of showing existence and is not a separate requirement. Here, acceptance of the two opinion affidavits by the board 1 precluded any additional inquiry into areas typically related to the existence of the compound.

I also disagree with the majority’s treatment of Ex parte Howard and In re Stubbs. Dismissing Howard as “one man’s opinion” and Stubbs variously as “not dealpng] with the issue now before us” 2 and as directed to a claim for “paving consisting of a combination of elements” rather than “new chemical compounds” is not instructive and serves to partially preserve a concept that originally was not sound. If the court overrules Stubbs and Howard in their effect, it should overrule the cases by name.

. I observe that the examiner did not consider the opinion affidavits sufficient to prove the existence of the compounds especially in view of appellant’s admission in the specification that the compounds are “transitory” and “are so reactive that they react with each other.” In re Brandstadter, 484 F.2d 1395 , 179 USPQ 286 (CCPA 1973); but see In re Sebek, 465 F.2d 904 , 59 CCPA 1220, 175 USPQ 93 (1972).

. The board, by its own action, has applied these cases in issues similar to those “now before us” and would, apparently, disagree that they are legally unrelated. Ex parte Dubsky, 162 USPQ 567 (Bd.App.1968); Ex parte Nelson, 109 USPQ 116 (Bd.App.1955). The board, in both Nelson and Dubsky, while discussing the facts of those cases, found them factually distinguishable and reversed the examiner in each.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.

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