The opinion
WORLEY, Chief Judge
(dissenting,, in which ALMOND, J., joins).
I am unable to agree with the majority that appellants have done any more-than would be obvious to one of ordinary skill in the art, thus they are not entitled to a patent.
The Cupples ai'ticle describes toxicity-tests on California red scale made with over 300 chemical compounds in an effort to find fumigants better than hydrocyanic acid. The results are grouped according to the compound’s indicated toxicity to California red scale. The chemicals listed in Group I show little or no-toxicity; Group II compounds are moderately toxic; and Group III compounds are “decidedly toxic.” Methyl isothiocyanate is listed in Group III which includes “the relatively few compounds which have shown a substantial degree-of toxicity.”
The Frear reference, which is a catalogue of insecticides and fungicides, lists'methyl isothiocyanate as toxic to California red scale.
The Stansbury et al. patent relates to-a nematocidal composition and to the method of applying it to soil. The patentees state that “It is the opinion of nematologists that a good nematocide should be volatile, slightly soluble in water, and should be able to penetrate nemic membranes.”
Eleven secondary references were cited by the examiner for the purpose of showing cumulatively that insecticidal compounds can be expected to have nematocidal properties as well. I agree with that evaluation and note that appellants also agree, at least with respect to two of the cited patents.
Claims 1-9 were rejected as unpatentable over Cupples and Frear in view of *253 Stansbury et al. and the eleven secondary references. In his answer, the examiner states:
“Cupples and Frear unequivocably disclose the use of methyl isothiocyanate as an effective fumigant insecticide. Stansbury teaches that nematocides should have a soil fumigating action. * * * The secondary references (11 references have been cited as typical from a considerably larger number supporting the same view) cumulatively demonstrate that the fumigant insecticides with which they are concerned can be expected to have both insecticidal and nematocidal properties. Accordingly, it is the Examiner’s contention that nothing more than routine experimentation would be involved in trying the prior art fumigant insecticide as a nematocide. A positive result would not be an unexpected and astonishing finding and does not manifest the unobviousness required for inventive stature. No more than a looked-for result is involved, and this, under the patent law, is not an unexpected or unobvious result. * * * ”
In affirming, the board noted that appellants’ specification acknowledges that various mustard oils, including ethyl isothiocyanate, the adjacent homolog of the compound claimed, was known to exhibit nematocidal action.
The sole issue here is whether the use of methyl isothioeyanate as a nematocide or fungicide is fairly suggested to one of ordinary skill in this field by the teachings of the prior art.
As I understand appellants’ contentions, they are that none of the references teaches that methyl isothiocyanate per se is a nematocide or fungicide, and that despite the known insecticidal properties of methyl isothiocyanate one skilled in the art would not consider its use as a nematocide to be obvious.
While I agree that none of the references expressly discloses the use of methyl isothiocyanate as a nematocide, per se, I think that the prior art would clearly suggest its use for that purpose, primarily because the claimed compound is known as an insecticide; because materials which are known to have insecticidal properties frequently exhibit nematocidal properties as well; and finally because,, as the board observed, a variety of mustard oils, including the adjacent homolog to appellants’ compound, ethyl isothiocyanate, are admitted by appellants to benematocides.
It is clear that Cupples shows that methyl isothiocyanate is an effective fumigant insecticide. Frear likewise refers to the same compound as an insecticide and fungicide. Stansbury et al. teach that an effective nematocide should volatilize or have a fumigating action on the soil. The eleven secondary references show that fumigant insecticides are-likely to exhibit nematocidal properties, also. In addition, appellants’ specification discloses that various closely related isothiocyanates, including the next adjacent homolog of the claimed compound, are nematocides. Under such circumstances, the prior art would fairly suggest to one of ordinary skill the use of methyl isothiocyanate as a nematocide.
I am not persuaded, as is the majority,, that the use of methyl isothiocyanate as a nematocide is not clearly suggested, and therefore obvious in view of the art of record, merely because the other mustard oils may be toxic to plants. The art recognizes the claimed compound to be a fumigant insecticide and fungicide; such materials are frequently used on plants; hence, there appears to be good reason to assume that methyl isothiocyanate is compatible with plant life. Absolute predictability of success is not essential in order that an invention be-deemed obvious. In re Moreton, 288 F.2d 940 , 48 CCPA 928, 129 USPQ 283 .
Furthermore, I see no inconsistency in the board’s position in Ex parte Hessel, 137 USPQ 384 . The case here is readily distinguishable on its facts from that case. We have more than a bare-teaching of insecticidal activity alone in the instant ease. Here we have a teaching that methyl isothiocyanate is a fumi *254 .gant insecticide and that the adjacent homolog will kill nematodes. Neither of these facts is present in Hessel.
There are no grounds here to reverse the decision of the board. I would affirm the rejection of all the claims.