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
SMITH, Judge
(dissenting).
My analysis of the invention involved here differs from that of my colleagues and leads me to a different conclusion on the issue of patentability of the appealed process claims. The specification and claims seem to me to show that the invention relates to decreasing the toxicity of the alkyl esters of certain triiodobenzoic acids, particularly, the ethyl ester of 3-acetamido~2,4,6-triiodobenzoic acid by the placement of hydroxy groups in the alkyl ester moiety in such positions that the carbon atom adjacent to the carboxyl group is always unsubstituted. The specification states:
“This restriction of the placement of the hydroxy groups eliminates the hemiacetal type derivatives which would result from having a hydroxy group on the carbon atom attached to the carboxy group.”
Therefore, I view the product and process claims as but different ways of claiming the disclosed invention. At the time this invention was made, the prior art did not disclose either the claimed product or the claimed process for making that product. I am unable to find a factual basis for the assumption stated in the majority opinion written by Judge Worley, that “clearly the invention lies in the compounds themselves, by whatever process produced.”
In rejecting applicant’s process claims as “obvious” we should determine what would have been obvious from the prior art to one of ordinary skills in the chemical arts “at the time the invention was made.” ( 35 U.S.C. § 103 ) (Emphasis added.)
The prior art “at the time the invention was made,” must, in my opinion, exclude applicant’s new compounds. It is only as the prior art is viewed after applicant’s invention of the new compounds that the process claimed has been found by the majority opinion written by Judge Worley to be obvious to a person of ordinary skill in this art. This, in my judgment, is not a correct application of 35 U.S.C. § 103 .
While Judge Rich’s concurring opinion-does not state this assumption as directly as does the majority opinion written by Judge Worley, it seems to me it is implicit in the reasoning by which the conclusion is reached that it would be obvious to react A and B “because that is dictated by the desire to produce AB.”' The same assumption underlies his further statement “while selecting A and selecting B to react with it may not be the only way to produce AB, it cannot be contended that it is not the obvious thing- *537 to do if AB is what you want to make.” (Emphasis added.)
Since I am unwilling to consider the new compounds as a part of the prior art at the time the invention was made, I would reverse the decision of the board.