# Application of Johannes Heyna, August Bauer and Klaus Berner

> Court of Customs and Patent Appeals · July 28, 1966 · 360 F.2d 222

URL: https://www.frixlaw.com/law-library/cases/9451702

## Case

- **Full name:** Application of Johannes HEYNA, August Bauer and Klaus Berner
- **Court:** Court of Customs and Patent Appeals
- **Decided:** July 28, 1966
- **Citations:** 360 F.2d 222; 53 C.C.P.A. 1331
- **Precedential status:** Published
- **Opinion:** Dissent by Martin
- **Judges:** Martin, Smith, Rich, Almond, Kirkpatrick
- **Cited by:** 3 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9451702

## Opinion text

MARTIN, Judge
(dissenting).
I cannot agree with the conclusion of the majority since my study of the record does not reveal that the examiner has made a prima facie case of obviousness based on the structures of the references.
As exemplary of the differences between the claimed compounds and the reference compounds, I focus attention here on the substituents on the phenyl ring (called the “diazo ring” by the solicitor, see majority opinion at footnote 2) of the “diazo” component of the dye.
Appellant shows two substituents on the “diazo ring” (besides the sulfatoethyl sulfone group) which are ortho and meta to the -N=N-group [azo-group]. Alsberg discloses no substituents on the “diazo ring.” Heyna and Bolliger 1 dis *229 close only one substituent, in the ortho position, which may be OCH3, CH3, Cl, or OH. Muller and Bolliger do have very general statements about “other” or “further” substituents. Muller states:
The diazo compounds may obviously contain further nuclear substituents besides the sulfone-or sulfonamide-group, for example, halogen atoms, alkyl groups, alkoxy groups, nitro groups, and so forth.
Other than that statement, Muller shows no specific examples in which there are any substituents on the “diazo ring.” Bolliger states:
* * * The dyestuff components to be used may, of course, contain other substituents such, for example, as halogen atoms, nitro groups, acylamino groups, alkyl groups or alkoxy groups. However, there are advantageously used diazo compounds which contain no hydroxyl group in ortho-position to the diazo group.
Bolliger’s examples show either no sub-stituents, or only one, OCH3 or CH3, ortho to the “diazo group.”
I am compelled to agree with appellants that the general teachings in Muller and Bolliger can be taken only as a “suggestion” of what might be substituted. That suggestion, as appellants note “is practically incapable of assessment insofar as the number of possible substitutions is concerned.” I also agree with appellants that there is no specific suggestion “as to where on the * * * [“diazo ring”] such substitutions should be made or how many such substitutions should be made.” I cannot consider the general basket disclosure of Muller and Bolliger to render the claimed compounds prima facie obvious. The lack of sub-stituents in Alsberg, and the single sub-stituent in Heyna and Bolliger likewise do not convince me that the claimed compounds prima facie are obvious such that the burden to show unexpected properties shifts to appellants. Thus, I feel that the affidavits of Berner are unnecessary to the case. In my view, the board’s decision should be reversed.
. It should be made clear that an appellant may present evidence to the Patent Office, including “references,” to support his arguments for patentability, but such evidence must be presented timely. The Bol-liger and Heyna references were cited by tbe examiner early in the prosecution and compounds thereof were tested in an affidavit. Thus the references were timely when “cited * * * before the board.”

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9451702. Public record. Not legal advice.