Later courts went against this
Questioned by In re Herbert, 461 F.2d 1390 (1972)
In In re Susi, 58 CCPA 1074, 1076 n. 1, 440 F. 2d 442, 444, 169 USPQ 423, 424 (1971), we noted that the parties had raised, but that we did not reach, “the interesting issue * * * of the continued validity of In re Larsen, 49 CCPA 711, 292 F. 2d 531, 130 USPQ 209 (1961), in view of In re Taresy-llornoch * * Larsen was the basis of this court’s holding in In re Ueugebcmer, cited by the board.
Questioned by Application of Peter Vincent Susi, 440 F.2d 442 (1971)
This rejection has raised the interesting issue, which the parties have argued but which we do not reach because of our affirmance of the other rejections, of the continued validity of In re Larsen, 292 F.2d 531, 49 CCPA 711 (1961), in view of In re Tarczy-Hornoch, 397 F.2d 856, 55 CCPA 1441 (1968).
The opinion
MARTIN, Judge
(concurring).
I am of the opinion that the decision of the board should be affirmed for the following reason:
It appears from the prior art that the appealed claims recite only obvious esterification processes. I do not believe the mere selection of the- particular compounds to be reacted imparts patentability to these process claims any more than the selection of particular parts of a machine would render an obvious process for making the machine patentable.
Although I am aware that machines differ from chemical compounds in that the individual parts of a machine retain their identity and merely interact or cooperate in producing some desired result while chemical reactants lose their identity in reacting to produce a new substance, I do not believe this difference is significant in deciding the issue before us. The prior art in this instance indicates to me that the chemist of ordinary skill would know that appellant’s chemical reactants would react as stated and claimed.