“Appellant contends that obviousness of a novel compound is to be decided not only from a comparison of its structural formula with that of the prior art compound, but from all properties of the compounds.... We think appellant’s *1352 contentions have merit.... As we indicated in In re Lohr, 50 CCPA 1274, 317 F.2d 388 (1963), it is possible to obtain a patent where the showing proves substantially greater effectiveness.... In the case at bar, we are impressed by the 7-fold improvement in activity and, in the absence of valid countervailing evidence, we find the claimed compounds to be unobvious.”
How later courts described this case
- “Appellant contends that obviousness of a novel compound is to be decided not only from a comparison of its structural formula with that of the prior art compound, but from all properties of the compounds.... We think appellant’s *1352 contentions have merit.... As we indicated in In re Lohr, 50 CCPA 1274, 317 F.2d 388 (1963), it is possible to obtain a patent where the showing proves substantially greater effectiveness.... In the case at bar, we are impressed by the 7-fold improvement in activity and, in the absence of valid countervailing evidence, we find the claimed compounds to be unobvious.”
Written by the judges who cited it.
The opinion
ALMOND, Judge
(concurring).
The jurisdiction of this court in ex parte patent cases is limited to appellate review of a “decision of the Board of Appeals”. 35 U.S.C. § 141 , 28 U.S.C. § 1542 . Whether a panel purporting to render a decision on behalf of the Board of Appeals is capable of rendering a valid decision depends upon whether that “board” panel is constituted in accordance with 35 U.S.C. § 7 . If a given panel is clearly illegally constituted in violation of the terms of section 7, neither the Commissioner of Patents nor any other Patent Office executive could make any decision of such a panel into a valid “decision of the Board of Appeals”. To permit this would be to allow administrative officials to override the clear intent of Congress as expressed in the Patent Act of 1952.
I regret that I cannot agree with the majority’s decision that this court is precluded from questioning the decision of the First Assistant Commissioner that the decision of the “board” panel in this case is a binding decision of the Board of Appeals. In my view, the majority has expanded the jurisdiction of this court of limited jurisdiction to cover review of not only (1) decisions of the *939 Board of Appeals but also (2) decisions which the Commissioner represents to be decisions of the Board of Appeals, regardless of whether or not they are legally such.
I am not concerned with whether appellant raised the issue of jurisdiction either in the Patent Office or before this court, or with whether the issue is covered by his Reasons of Appeal, or with whether appellant abandoned the issue. It is too well-settled to require citation of authority that jurisdiction of the subject matter is never waived in a pending case. This is the unvarying rule even in courts of general jurisdiction, and it should be applicable with special force in this court of limited jurisdiction.
It would also be a matter of no concern if appellant, the Commissioner, and counsel for both parties all agreed that this court has jurisdiction of the subject matter of this appeal. The parties before a Federal court cannot confer appellate jurisdiction by their mere consent; only Congress can do so. Since Congress has confined our jurisdiction in ex parte patent cases to appellate review of a “decision of the Board of Appeals” under section 141,1 believe we should consider the issue of whether the questionable “board” panel in the present case was legally constituted under section 7, so that it could conceivably render a valid decision on behalf of the “Board of Appeals.” If the “board” panel could not do so because of its illegal composition, this court would lack jurisdiction of the subject matter under the statute.
The pertinent portion of 35 U.S.C. § 7 is set forth in a footnote to the majority opinion. Especially important is the proviso that “[n]ot more than one such primary examiner shall be a member of the Board of Appeals hearing an appeal.”
I find no patent ambiguity either in the quoted proviso or elsewhere in section 7. To the contrary, the terms are clear, plain, and unambiguous. In such a situation it is well settled that recourse to legislative history is precluded. Lake County v. Rollins, 130 U.S. 662, 670-671 , 9 S.Ct. 651 , 32 L.Ed. 1060 ; United States v. Missouri Pacific Railroad Co., 278 U.S. 269, 277-278 , 49 S.Ct. 133 , 73 L.Ed. 322 ; Cohn & Lewis v. United States, 25 CCPA 220, 226; United States v. Kung Chen Fur Corp., 188 F.2d 577, 584 , 38 CCPA 107, 117.
The “board” panel whose decision is on appeal here consisted of a regular member of the Board of Appeals with the rank of examiner-in-chief, a primary examiner, and a supervisory examiner (of higher grade than a primary examiner). The statute, 35 U.S.C. § 7 , specifically provides that the Commissioner “may designate any patent examiner of the primary examiner grade or higher” as an acting examiner-in-chief, and that any “examiner so designated shall be qualified to act as a member of the Board of Appeals.” The only other statutory limitation of significance on the facts of this case is the aforementioned proviso that “[n]ot more than one such primary examiner shall be a member of the Board of Appeals hearing an appeal.” Only one primary examiner sat on the “board” panel whose decision is here on appeal. Therefore, I think that the panel was legally constituted in accordance with the unambiguous terms of section 7. Ex parte Beyerstedt, 103 USPQ 189 (Bd.Appls.1952). Consequently, its decision is entitled to be regarded as a “decision of the Board of Appeals” which we have statutory jurisdiction to review.
I think it should be mentioned that, while individual Congressmen or members of committees might well have intended for the proviso to read “not more than one such designated examiner shall be a member of the Board of Appeals,” the actual language used in the statute is clear and plain to the effect that “[n]ot more than one such primary examiner shall be a member” of a “Board of Appeals” panel. The class of “designated” examiners-in-chief would clearly include both (1) primary examiners and (2) examiners of higher grade than primary examiners. Since Congress enacted a statute containing the unambiguous terms “primary examiner” in the proviso, the statute must be held to *940 mean exactly what it says, notwithstanding the strong possibility that a minority of individual Congressmen and committee members may have intended the expression in the proviso to read “designated examiner” or “acting examiner-in-chief.”
For the above reasons, I have considered the merits of this controversy, and I agree with the majority on the merits.