In re Kaufmann

¶5ALMOND, Judge.

¶6This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 5, 6, and 10 of appellants’ application entitled “Production of 6-Aminopenicillanic Acid.” 1 No claims have been allowed.

¶7The invention relates to a biochemical process for producing 6-aminopenicil-lanic acid by the hydrolysis or cleavage of a penicillin through the action of a penicillin acylase-producing strain of species of the genus Proteus, particularly Proteus OX-19.

¶8Claim 1 is illustrative:

1. A process for producing 6-ami-nopenicillanic acid which comprises reacting a penicillin having the formula

wherein n is a whole figure selected from the group consisting of O and 1, X is a member selected from the group consisting of sulphur and oxygen, R is a member selected from the group consisting of alkyl groups having from 2 to 6 carbon atoms inclusive; alkenyl groups having from 3 to 6 carbon atoms inclusive; phenyl; and monosubstituted phenyl groups in which the substituent is a member selected from the group consisting of chloro, bromo, iodo, fluoro, nitro, alkyl groups having from 1 to 6 carbon atoms, inclusive, alkenyl groups having from 3 to 6 carbon atoms inclusive, and alkoxy in which the alkyl groups has [sic] from 1 to 6 carbon atoms inclusive, with a penicillin aeylase-pro-ducing strain of species of the genus Proteus.

¶9Dependent claims 5 and 10 specify the use of Proteus OX-19 species of bacteria, and dependent claim 6 specifies ben-zyl penicillin as the starting material.

¶10The examiner rejected all the claims under 35 U.S.C. § 103 as unpatentable *1098over Huang.2 The Huang patent discloses producing 6-aminopenieillanic acid by subjecting a penicillin to the action of penicillin acylase-producing strains of several genera, including the genus Proteus. It is disclosed that the preferred strains of microorganisms are selected from twenty-seven enumerated species, including Proteus rettgeri and Proteus sphingidis. The examiner took the position that the selection of the particular penicillin acylase-producing Proteus strain claimed, i. e., Proteus OX-19, would have been obvious to one of ordinary skill in the art from the teaching in Huang. The board affirmed the examiner and noted that claims 1 and 6, which broadly call for penicillin acylase-producing strains of the genus Proteus, might well be considered anticipated by Huang under 35 U.S.C. § 102.

¶11After considering the arguments of counsel concerning the rejection based upon the Huang reference, we agree with the Patent Office that it would have been obvious to one of ordinary skill in the art from the teaching of Huang to use any penicillin aeylase-pro-ducing strain of species of the genus Proteus in the production of 6-amino-penicillanic acid.

¶12The primary issue in this case, however, is not the correctness of the art rejection but whether Huang is available as a reference. That is, appellants rely upon the April 18, 1959 priority date of their German application3 to overcome the June 22, 1959 effective filing date of Huang. The examiner and board, stating that the disclosure of the German application must comply with 35 U.S.C. § 112 in order for appellants to obtain the benefit of the filing date thereof in overcoming the Huang reference, found that the German disclosure does not support the claims of the present application. Appellants have for the most part assumed that the German application must satisfy § 112,4 and it is their position that it does. Therefore, we, too, assume that appellants’ German application must support the present claims in accordance with 35 U.S.C. § 112 before it can be used to overcome the Huang reference.5 The German application discloses a biochemical process for producing 6-aminopenicillanic acid by causing extracts of bacteria to act on penicil-lins. It states that:

Found to be particularly well suitable for this purpose are extracts of gram-negative bacteria, for instance Coli, Proteus, Aerobacter aerogenes, Salmonella, and Shigella species.

¶13Only one example was included in the German application as originally filed,6 and that was directed to the use of Coli bacterium cells to convert sodium penicillin G to 6-aminopenicillanic acid. The solution produced in the example was tested to detect 6-aminopenicillanic acid by comparing it with one of the *1099conventional organisms sensitive to penicillin.

¶14As mentioned, the examiner took the position that the disclosure in the German application is insufficient under 35 U.S.C. § 112 to support the present claims. His reason for finding the German disclosure insufficient was that no species of the genus Proteus is exemplified or even mentioned therein. The board agreed with the examiner’s reasoning and, in addition, stated:

Of possibly even greater significance, both the Examiner and appellants appear to have ignored the fact that claims 1 and 6 herein are not directed to the entire genus Proteus but only to penicillin acylase-producing strains of species of said genus. It is quite clear that the German application, filed April 18, 1959, did not disclose the concept of this subgenus of Proteus, which is limited to penicillin acylase-producing strains of species thereof.

¶15Appellants contend, on the other hand, that the German application need not give an example of a species of the genus Proteus in order to comply with § 112. Appellants’ position is that in the context of the German disclosure the genus Proteus is but one of the genera of bacteria mentioned, and thus should not be considered a disclosed “genus” but rather a “species” or “subgenus” of the disclosed genera. In re Risse, 378 F.2d 948, 54 CCPA 1495 (1967), and In re Grimme, 274 F.2d 949, 47 CCPA 785 (1960), are cited for the proposition that it is not necessary in such instances to give an example of the “species” since the claimed “subgenus” is expressly disclosed in the application which is relied on for priority. It is also contended that the test for establishing operability which is found in the example of the German application as initially filed is in essence a test to determine penicillin acylase-producing activity and that this supports the claim terminology “penicillin acylase-producing strain.”

¶16We cannot agree with any of appellants’ contentions. Under the fact situation presented, we fail to see how the mere inclusion of the genus Proteus in a list of gram-negative genera of bacteria used to produce 6-aminopenicil-lanic acid is sufficient under the description requirement of § 112 to support a claim directed to “a penicillin acylase-producing strain of species of the genus Proteus."

¶17Appellants’ United States applications and the Huang reference all disclose that only penicillin acylase-producing strains will produce the desired result, and each sets forth detailed tests for determining when strains are penicillin acylase-producing as well as giving representative examples of such strains. The German application does not disclose using penicillin acylase-producing strains of species of the genus Proteus nor are there any examples of such strains given.

¶18If appellants want to label the genus Proteus as a “subgenus” of the genera disclosed in the German application, it appears to us that a penicillin acylase-producing strain of species of this “subgenus” which is now being claimed may then be called a “sub-sub-genus.” This “sub-subgenus” is not disclosed in the German application except by being generally included within the genus Proteus. Therefore, the principles laid down in In re Risse, supra, and In re Grimme, supra, upon which appellants rely, are not applicable to the present fact situation.

¶19Appellants note that the German application sets forth a test for detecting the presence of 6-aminopenicillanic acid, and it is alleged that the inclusion of this test makes inherent the disclosure of penicillin-acylase producing strains. We cannot agree. The test is not designated as one for determining penicillin-acylase producing ability, and we fail to see how the mere presence of such a test in the German disclosure can aid appellants in this case. The German application, even with the test set forth in the example, is entirely too speculative to support the present claims.

¶20*1100Finally, we note that the claims were also rejected as unpatentable over the claims in appellants’ parent patent7 on the ground of double patenting. Since we affirm the rejection based on the Huang reference, there is no need to consider the double patenting rejection, although it is hard to see how in view of recent decisions of this court such a rejection could stand after appellants filed their terminal disclaimer. See In re Vogel, 422 F.2d 438, 57 CCPA 920 (1970).

¶21The decision of the board affirming the rejection of all claims under 35 U.S. C. § 103 as unpatentable over Huang is affirmed.

¶22Affirmed.