of these experiments the feed was first changed to include acrolein as well as propylene as part of the initial feed, and then the propylene was eliminated resulting in a feed stream comprising acrolein, oxygen and steam. The temperatures of the reactor during these experiments were between 300°C and 450°C. These experiments were recorded in Koch et al. Exhibit 9.

Pusey, a laboratory technician [corroborated the testimony of Koch] ** Wiley testified that he, during the period spanning the latter part of February to early March 1959, activated a catalyst identified as "E-16" prepared by Eifert ***. This work was recorded in Koch et al. Exhibit 19. Wiley further testified that this catalyst was employed by him in the vapor phase oxidation of acrolein to acrylic acid, as recorded in Exhibits 21 and 22, during the latter part of March, 1959. The feeds in these experiments included an aqueous solution of acrolein and either air or oxygen [in vapor phase], and at a reaction temperature of approximately 375°C.

Derrickson, a laboratory technician, testified that he assisted Wiley and participated in the experiments recorded in Exhibits 21 and 22, although he did not know the specific composition of the catalyst employed, he testified that during the period in question they were using cobalt boromolybdate catalysts in such oxidation process.

Eifert, a chemist holding a Ph.D. degree in organic chemistry, testified that Robinson requested that he and Wiley study the vapor phase oxidation of acrolein to acrylic acid over a catalyst as described in Hartig patent No. 2,625,519 and as employed in the process of Koch et al. patent 3,065,264. [5] As a consequence of this request Wiley oxidized acrolein to acrylic acid in the presence of steam and obtained a good yield of acrylic acid. Eifert further testified to preparing, with the assistance of his laboratory assistant, a catalyst in accordance with Example II of the Hartig patent, with which patent he was familiar, and designating the catalyst "E-13". This catalyst was employed, during the latter part of March, 1959, in an experiment in which an acrolein rich nitrogen steam mixed with oxygen was fed to a reactor and acrylic acid was obtained as the product. The produce was analyzed by gas chromatography. This experiment is recorded in Koch et al. Exhibit 23. Eifert also testified to the preparation of a catalyst identified as "E-16" by his assistant under his direct supervision in a manner identical to the preparation of the catalyst identified as "E-13", and giving a portion thereof to Wiley.

* We believe that the evidence, when considered in its entirety, establishes with the certainty here required, that the invention defined by the counts in issue was conceived and actually reduced to practice prior to April 15, 1959, the date to which Bethell et al. are restricted for the acts of conception and reduction to practice.

We are not persuaded by the Bethell et al. arguments concerning the adequacy of the analysis of the composition of the catalysts employed. ['] The witnesses,

This patent relates to the vapor oxidation of propylene to acrylic acid using catalysts which are the same as those disclosed in the Hartig patent and in the Koch patent involved here.

Principally, Bethell argues that an analysis was necessary to prove that the atomic ratio of cobalt to molybdenum was within the range of from 1:1 to 0.5:1 recited in the count. While we agree with the board's conclusion that it is reasonable under the circumstances to believe that the catalysts used by Koch satisfied the requirements of the count, Koch points out that in order to provoke this interference Bethell copied claim 1

374-293-71- -36

particularly Eifert, as noted above, testified that the catalyst employed in several of the experiments relied upon for the reduction to practice was prepared in accordance with Example II of the Hartig patent, with which process they were familiar. In view of the fact that the teachings of a known process were followed, we do not believe it is fatal to the establishment of an actual reduction to practice here that the catalyst formed may not have been analyzed. It is reasonable to believe that the product that was produced was one as taught by Example II of Hartig, which would be a catalyst falling within the requirements of the count. **

Nor are we persuaded by the Bethell et al. arguments with respect to the fact that Eifert's testimony concerning the preparation of the catalysts recorded in Exhibits 16 and 17, and the oxidation of acrolein recorded in Exhibit 23 is hearsay. Eifert testified ** that his laboratory assistant, under his direct supervision, and he both actually participated in performing the experiments recorded in these exhibits. In our opinion, this testimony, as well as the supporting contemporaneous documents, adequately establish that the experiments, as set forth in these exhibits, were actually performed on the dates there indicated.

Since we have found that the Koch et al. evidence establishes that they had actually reduced to practice the invention defined by the counts prior to April 15, 1959, the question of Koch et al's. diligence need not be considered [7]

The decision of the board is affirmed.

427 F.2d 1394; 166 USPQ 256

IN RE SUNE BERGSTROM AND JAN SJOVALL (No. 8256)

PATENTS

1. PATENTABILITY-ANTICIPATION-PUBLICATIONS-IN GENERAL

Inasmuch as applicants' article was published more than one year prior to date of any application by applicants which describes subject matter of

of the Koch patent in a modified form as claim 18 which reads in pertinent part as follows:

✦✦✦ the atomic ratio of base metal to molybdenum being not substantially greater than 1:1 [Emphasis added.]

The amendment in which this claim was added states in part:

The statement of atomic ratio of base metal to molybdenum also differs slightly in the above claim 18 from the wording of the claim of the patent, but here again claim 18 corresponds substantially to claim 1 in the patent.

From this it is apparent that Bethell would have us consider the ratio of base metal to molybdenum to be material only as to Koch's case. This we will not do.

We also have observed that the British Provisional Specification upon which Bethell's senior-party status is grounded makes no mention of any ratio of base metal to molyb denum. The equitable rule, "What's sauce for the goose is sauce for the gander," would therefore appear to be applicable here.

The board nevertheless went on to "complete the record" by analyzing the evidence of diligence, concluding that:

Koch et al. and their attorney were reasonably diligent during the critical period, that is from a time just prior to April 15, 1959 until the invention here at issue was constructively reduced to practice by the filing of their application for a patent on May 25, 1959.

claims, it is eligible as a timewise statutory bar under 35 USC 102(b) if claimed invention was described in or rendered obvious by that publication. 2. PATENTABILITY-IN GENERAL-WORDS AND PHRASES

Criteria for determining whether subject matter is "new" within meaning of 35 USC 101 are no different than criteria for determining whether that subject matter possesses the "novelty" expressed in the title of section 102; "new" in section 101 is defined and is to be construed in accordance with provisions of section 102; thus, that which possesses statutory novelty under provisions of section 102 is also new within intendment of section 101.

3. PATENTABILITY-SUBJECT MATTER FOR PATENT MONOPOLY-PURE ARTICLE Pure materials necessarily differ from less pure or impure materials; if the latter are the only ones existing and available as a standard of reference, perforce the "pure" materials are "new" with respect to them; moreover, whether claimed pure materials have some usefulness or assortment of properties as impure materials of prior art has no bearing on factual and legal matter whether pure materials are new vis-a-vis impure materials within meaning of 35 USC 101, although it is but one of the factors to consider in determining their obviousness under section 103.

United States Court of Customs and Patent Appeals, July 16, 1970 Appeal from Patent Office, Serial No. 203,752

[Reversed.]

Earl C. Spaeth, attorney of record, for appellants. Eugene O. Retter, George T. Johannesen, Sidney W. Russell, of counsel.

Joseph Schimmel for the Commissioner of Patents. Fred W. Sherling, of counsel.

[Oral argument January 9, 1970 by Mr. Spaeth and Mr. Sherling]

Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and MCMANUS, Judge, sitting by designation

ALMOND, Judge, delivered the opinion of the court:

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 23 and 53 in appellants' application for "PGE Type Compounds" "as lacking in novelty under 35 U.S.C. 101."

1

The invention relates to two chemical compounds, as reflected in the claims:

23. 7-[3-hydroxy-2-(3-hydroxy-1-octenyl)-5-oxocyclopentyl]-5-heptenoic acid, said acid being sufficiently pure to give a substantially ideal curve on partition chromatography using an ethylene chloride: heptane: acetic acid: water (15: 15: 6:4) solvent system.

53. A composition of matter consisting essentially of 7-[3-hydroxy-2-(3-hydroxy-1,5-octadienyl)-5-oxocyclopentyl]-5-heptenoic acid.

1 Serial No. 203,752, filed June 20, 1962 as a continuation-in-part of serial Nos. 738,514 filed May 28, 1958, and 199,209 filed Apr. 9, 1962.

Both compounds, termed PGE, and PGE3, respectively, are members of a family of compounds known collectively as prostaglandins. According to the specification, both are useful in stimulating smooth muscle and in lowering blood pressure.

Some background information will be helpful in understanding the issues raised by the decisions below.

It appears from the record that scientists have known for many years that certain secretions and extracts obtained from human and animal male accessory genital glands possessed the pharmacodynamic effects of lowering blood pressure and stimulating smooth muscle. One Kurzrok, for example, observed in 1930 that human seminal plasma augmented or decreased tone and spontaneous movements in isolated strips of human uterus. A few years later, Goldblatt and von Euler observed that human seminal fluid, human prostate secretions, and secretions of the vesicular gland of sheep produced hypotensive activity and stimulated the smooth muscle in isolated rabbit's intestine. Von Euler also examined extracts of prostate gland and sheep vesicular gland (obtained by subjecting the organ to alcohol extraction, concentrating the extract by evaporation of alcohol and eliminating lipoids, as required, by a further ether extraction) and found similar pharmacodynamic activity. As von Euler then noted, "[t]he attempt to identify the active substance with known substances has thus far been unsuccessful," although he thought that "to all appearances the substance is an independent basic compound." Shortly thereafter, von Euler appears to have determined that the "active principle" in the above secretions and extracts "had acidic character," and he named it "prostaglandin." He was able to free it from associated material "to a certain extent" to obtain "semi-purified extracts," having found that, after extraction with ethanol and evaporation of the ethanol, prostaglandin could be taken up in ether from an acid solution and subsequently extracted with alkaline water.

In the late 1950's appellants Bergstrom and Sjovall isolated two distinct chemical compounds in essentially pure crystalline form "from crude materials, such as von Euler prostaglandin, or directly from accessory genital materials such as prostate glands and sperm." Their discovery of those compounds, which were originally known as PGE and PGF (now PGE, and PGF,), is described in their earlier application serial No. 738,514, now patent No. 3,069,322, issued Dec. 18, 1962, and the two pure compounds form the subject matter of some of the claims of that patent. Both compounds were found to have a smooth muscle stimulating effect, but only PGE has hypotensive activity. As

described in similar language both in the patent and in the present application:

These compounds [PGE, and PGF.] are associated in the source materials and in crude extracts thereof with antigens and pyrogens, for example, tissue fragments, lipids, cellular debris, foreign proteins, and the like, and are not useful for parenteral applications. The isolation of these compounds free of antigens and pyrogens made it possible to utilize their pharmacodynamic effects without undesirable side effects or reactions. [2]

To isolate PGE, and PGF1, it appears from the Bergstrom et al. patent and the present application that appellants first prepared a crude extract containing PGE, and PGF, by subjecting sheep prostate gland to alternate alcohol, ether and alkaline phosphate buffer extractions somewhat in the manner of von Euler. A solid residue obtained upon drying a final ether extraction was then given a preliminary purification by subjecting it to a "five stage countercurrent distribution" between ether and phosphate buffer, and the resultant ether and buffer phases were dried. Certain of the dried ether and buffer phases were then pooled and subjected to two different "reversed phase partition chromatography" procedures employing two different solvent systems. Certain fractions of the eluate obtained from that purification procedure yielded crystal of essentially pure PGE, and PGF1.

In 1960, appellants also published a description of their work relating to the isolation of PGE, and PGF, in Acta Chemica Scandinavica, 14, 1693-1705 (1960). The procedure with respect to the isolation of PGE, was described thus:

We have described the isolation of prostaglandin F from vacuum dried sheep prostate glands in the preceding paper * * *.

In that work it was noticed that a more lipid soluble factor was sometimes present which showed activity both on intestinal strips and on rabbit blood pressure. It has been found that this fraction is responsible for most of the activity of the fresh or frozen glands.

The isolation of this factor, prostaglanding E (PGE) in crystalline form, will be described in this paper.

Extraction procedure. The frozen glands were minced in a meat grinder. After addition of 4 liters of 95% ethanol per kg, the suspension was stirred mechani

2 The present specification goes on to say:

They [compounds including PGE2 and PGE] can be extracted from a variety of naturally occurring animal material particularly those rich in lipids, such as, lung, liver, kidney, duodenum, bone marrow, spinal cord, fish meal, and chicken offal, as well as from sperm and prostate, obtained from a variety of animals such as fish, birds, and mammals, for example, chickens, pigs, sheep, cattle, and man. While previous workers have obtained biologically active materials from some of these natural sources, they have not heretofore succeeded in isolating such materials in essentially pure form free of pyrogens and antigens associated with tissue fragments or cell debris, lipids, foreign protein and the like. Consequently such materials have not been suitable for repeated parenteral administration.