in that this would lead to double patenting. In re Hofberger, 27 CCPA 835; 109 F. 2d 239; 1940 C.D. 173; 515 O.G. 832; In re Zuckerman, 67 F. 2d 905; 1934 C.D. 106; 440 O.G. 5; Food Machinery Corporation v. Pacific Can Company et al., 70 USPQ 474. In this sense, it would seem that maintenance herein of the claims of this case indicated would manifestly be improper, and that such claims should reasonably be subject to the instant rejection, and we see no reasonable deterrent to this view merely in the fact that the claims of the copending application upon which the rejection is based may not have allowable status in that application, since the lack of a clear line of demarcation between the applications involved and the possibilities of double patenting which could result therefrom are not avoided by this factor.

As to claims 6 and 7 of the instant application, each of which recites a hole in the fastener for the purpose of bundling a plurality of fasteners together (a feature not disclosed in appellant's copending application), this feature is old in the prior art as we have shown above in our treatment of claims 6 and 7 with respect to the prior art, and thus represents a patentably immaterial difference. This being so, it is clear that claims 6 and 7 represent nothing patentable over the claims directed to the genus contained in appellant's copending application, and on this basis claims 6 and 7 would appear to have the same status as to the latter claims as claims 3, 4, 5, 18 and 19 herein.

We are not impressed by appellant's comments as to his attempts to insert in this application claims 11 to 15 of the copending application. Merely such insertion of the claims noted into the present case would not change the situation under immediate consideration, since claims 11 to 15 would still be present in appellant's copending application, there having been no actual or proposed cancellation of such claims therefrom proferred by appellant.

For the reasons given, we will sustain the instant rejection. [8] The decision of the Examiner is affirmed as to claims 3 to 8, 18 and 19, but is reversed as to claim 20.

Modified.

EX PARTE HERMAN HERBERT FOX

Appeal No. 30-21. Decided December 31, 1957

761 O.G. 906

1. APPLICATION-DISCLOSURE-NEW MATTER SUBSEQUENT INTRODUCTION OF A NEW NAME OR FORMULA FOR A COMPOSITION OF MATTER.

The original description in appellant's application of a product as “a white microcrystalline precipitate of melting point 167.5-171.5° C." and the

reference therein to it as an antitubercular agent, Held insufficient to warrant identifying the product as "Hexahydro-1,3,5-tri-isonicotinamido-s-triazine monohydrate" [rather than, as originally, as "1,1'-methylenebis (2-isonicotinylhydrazine)"], and claiming the product in terms of that new name rather than by its method of production; and such change in name (or formula) Held to involve new matter.

2. SAME-SAME-COMPOSITION OF MATTER.

66 ** a product may be characterized by its method of production, formula, name or tests by which it may be identified apart from its method of production."

3. SAME-SAME-SAME.

"*** the tests employed by appellant in his affidavit to establish the structure of the product are quite extensive and are intended to afford a full and complete identification thereof and we feel that this is a clear indication that the original identification of the product was wholly insufficient and showed the need for further and complete identification and is an admission that appellant now so considers the disclosure."

APPEAL from the Examiner.

Affirmed.

Before DUNCOMBE, Examiner-in-Chief, and MAGIL and WILES, Acting

Examiners-in-Chief

WILES, Acting Examiner-in-Chief:

This is an appeal from the final rejection of claims 45 and 46, the claims remaining in the application.

all

Claim 45 is sufficiently representative of the issue and is reproduced blow:

45. A compound selected from the group consisting of hexahydro-1,3,5-triisonicotinamido-s-triazine and acid addition salts thereof.

In the disclosure as filed, applicant described the production of some 37 or more compounds. For reasons not here relevant, the disclosure has been restricted to a single compound and its acid addition salts. For examples remain and each teaches the production of the claimed compound and all involve substantially the same procedure of reacting formaldehyde with isonicotinylhydrazine. In the original disclosure, the product was identified as 1,1′-methylenebis (2-isonicotinylhydrazine) whereas the product is now identified as hexahydro-1,3,5-triisonicotinamido-s-triazine monohydrate. The product in the original description was identified as a white microcrystalline precipitate which melted at 167.5-171.5° C. and there was a general statement that the novel compounds were antitubercular agents.

The issue in this appeal is whether the change in name (or formula) involves the introduction of new matter. In other words, the issue is whether appellant's identification of the product aside from its method of production is sufficient to positively identify the compound so as to warrant the introduction of the newly discovered

name (and formula) and claim the products in terms of the name rather than by its method of production.

Before the question of properly identifying the presently claimed compound arose, claim 28 was allowed. Claim 28 an original claim claimed the base compound by name which is now asserted to be incorrect. On January 18, 1955, nearly three years after the application was filed, appellant inserted a new name and formula for the compound and added the claims now before us in which the base is claimed by the new name. In an amendment filed November 7, 1955, there was filed therewith an affiavit of Fox relative to experiments conducted by him to establish the correct structure of the compound.

It is the position of the Examiner that appellant's application did not contain a factual description of the product except by the process of making it. Hence, the Examiner considers that the only way the product can be claimed is by a "product by process" type claim relying upon Ex parte Fesenmeier, 1922 C.D. 18; 302 O.G. 199 and Cochrane et al. v. Badische et al., 111 U.S. 293; 1884 C.D. 230; 27 O.G. 813. The Examiner contends that it is new matter to introduce now a description of the product in terms of its physical characteristics, i.e. by name where the original disclosure did not sufficiently identify the product and there was no intimation that the product might be a different product or entity relying upon Ex parte Vander Wal et al., 1956 C.D. 11; 705 O.G. 5 and Cochrane et al. v. Badische et al. supra. The Examiner thus has not refused to allow the appellant a product claim if it is claimed by its method of production but he has refused a patent claiming the product by name since he considers the description insufficient and incomplete for proper identification of the product.

Appellant maintains that new matter has not been introduced into the disclosure relying upon Riester v. Kendall, 34 CCPA 859; 72 USPQ 481; 159 F. 2d 732, Ex parte Geiger, 92 USPQ 382 and Interference No. 86,157 (paper 48) Hutchinson v. Gresham and Grigsby (Reissue Patent 2,348). Appellant argues that under the doctrine of Riester v. Kendall supra the formula or name of a compound can be corrected or revised if the original disclosure "does in fact fully teach how to secure and recognize a certain product" and "the product of the revised formula or structure is formed as a matter of fact in carrying out these steps of the process disclosed," and he contends that these conditions are met herein. He refers to the four remaining examples of his disclosure and relies upon the description of the product "a white microcrystalline precipitate of melting point 167.5171.5° C." as sufficient identification of the compound. Reference is also made to the product being an antitubercular agent which we do not regard as a physcial characteristic for identification purposes.

Appellant also refers to the method of producing the compound which, of course, would not be a characteristic apart from the method of production.

Appellant's affidavit describes tests conducted by him in order to fully identify and establish the structure of the compound. These tests relate to an elemental analysis as to carbon and hydrogen, moisture content, behavior upon degradation by oxidation and infrared spectroscopic examination in comparison of compounds of known structure, none of which were part of the original description identifying the compound.

With respect to appellant's reliance upon Ex parte Geiger supra, Hutchinson v. Gresham, supra, and Riester v. Kendall, supra, as authority for the subsequent introduction of a new name or formula, we do not agree with appellant that these decisions are controlling in the present situation. In each of these cases as stated therein the product or composition was sufficiently identified as to its physical or chemical characteristics so that such product could be identified apart from the method by which it was produced, and this is considered as an important distinction. Under these particular circumstances the change proposed in the above cases was permitted and the change in name or formula could not have been considered as a critical element of the disclosure since the original disclosure set forth sufficient characteristics for complete identification of the compound apart from the method of making. This is quite evident from the following excerpts from Riester v. Kendall supra:

an initial error in attempting to explain a reaction should not vitiate a disclosure which does in fact fully teach how to secure and recognize a certain product.

and:

The Board also held that appellee's British application disclosed not only the complete process for preparing the dyestuffs but also the dyestuffs themselves and the means for identifying them... [Emphasis added.] and in fact, in this decision the change proposed was considered

a gratuitous contribution that was not absolutely essential to a teaching of the invention. The further fact that it was couched in terms of uncertainty was reasonable notice to those skilled in the art that subsequent knowledge might necessitate altering the graphic or scientific explanation he offered. In our view of the present appeal, the structure or name of the compound as a means of defining the invention is critical since, as will be pointed out below, the original description is wholly insufficient to identify the product apart from the method of producing such product. It also is the position of appellant that his description of the product as to crystalline structure, melting point and utility is sufficient to properly identify the compound.

584019-61

[1] After full and careful consideration of the facts and circumstances herein in conjunction with all of the decisions cited we are constrained to agree with the Examiner that the present form of claim is not patentable to appellant.

[2] As pointed out in Cochrane et al. v. Badische et al. supra and Graham v. Jules Montenier, Inc., 103 USPQ 24, a product may be characterized by its method of production, formula, name or tests by which it may be identified apart from its method of production. Appellant does not take issue with the above doctrine although he asserts that he "has at all times purported to identify the product to a sufficient degree to enable identification thereof independent of reliance of the process." In Cochrane et al. v. Badische et al. supra, the Supreme Court was of the opinion that the Graebe and Libermann patent "furnished no tests by which to identify the product it covers" apart from its process of making. It is noted, however, in the description of the patent which is contained in the decision that these patentees had described the alizarine by color and its utility was well known.

Appellant contends that the melting point, color and form of the product are sufficient to adequately describe and identify the product but we cannot agree with this contention. While appellant has included as additional characteristics the melting point range and the form of the product, which was not given in the Graebe et al. patent, we do not consider these additional properties as sufficient to completely identify the product apart from its method of production or to distinguish over the Cochrane et al. v. Badische et al. doctrine to warrant a departure therefrom. No doubt there are a large number of compounds which are white, crystalline and have melting points within the range disclosed but this identification alone is considered wholly insufficient to properly identify the product. There are at the disposal of skilled chemists many other means by which compounds can be fully identified. These characteristics include a chemical analysis of the product, its solubility, molecular weight, its reactions and its specific crystal structure, none of which are contained in the original disclosure. [3] We observe that the tests employed by appellant in his affidavit to establish the structure of the product are quite extensive and are intended to afford a full and complete identification thereof and we feel that this is a clear indication that the original identification of the product was wholly insufficient and showed the need for further and complete identification and is an admission that appellant now so considers the disclosure. Consequently, to allow the claims in the present form without appellant originally having analyzed and otherwise adequately determined the character of the product and disclosed such characteristics would be similar to the result attempted by Graebe and Libermann in Cochrane et al. v. Badische et