dissenting:
The basis of .the majority opinion is that appellants’ compound is “structurally obvious” from the “generic formula” disclosed by the Suter reference. Majority opinion at 814, 816. Since I believe that this is not the proper test for determining the obviousness of a chemical compound under 35 U.S.C. § 103 (1970), and since the District Court prevented appellants from introducing legally relevant evidence in support of their claim, I respectfully dissent.
This court in Comm'n of Patents v. Deutsche Gold-und-Silber-Scheideanstalt Vormals Roessler, 130 U.S.App.D.C. 95, 397 F.2d 656 (1968) held that structural obviousness cannot alone be the basis of a patent rejection under 35 U.S.C. § 103 (1970). The court in Deutsche Gold was convinced, as is the majority here, of the “structural obviousness of the claimed compound and the prior art references . . . . ” 130 U.S.App.D.C. at 100, 397 F.2d at 661. However, the court quoting with approval from the decision of the Court of Customs and Patent Appeals in In re Papesch, 315 F.2d 381, 391, 50 CCPA 1084 (C.C.P.A.1963) noted that:
. . . . a formula is not a compound and while it may serve in a claim to identify what is being patented, as the metes and bounds of a deed identify a plot of land, the thing that is patented is not the formula but the compound identified by it. And the patentability of the thing does not depend on the similarity of its formula to that of another compound but of the similarity of the former compound to the latter. There is no basis in law for ignoring any property in making such a comparison. An assumed similarity based on a comparison of formulae must give way to evidence that the assumption is erroneous, (emphasis in original).
Thus, the District Court’s reliance on structural similarity as proof of obviousness, rather than on the properties of the claimed compound — the subject matter as a whole — was “clearly erroneous”. See, Eli Lilly & Co. v. Generix, 460 F.2d 1096, 1103 (5th Cir. 1972); In re Stemniski, 444 F.2d 581 (C.C.P.A. 1971); Note; Patentability of Chemical Compounds, 50 Tex.L.Rev. 566 (1972).
Although appellants should not be denied a patent under 35 U.S.C. § 103 (1970) because of structural obviousness alone they still must demonstrate an “advancement in the art” in order to meet the constitutional requirement for the granting of a patent. Graham v. John Deere Co., 383 U.S. 1, 6, 86 S.Ct. *339684, 15 L.Ed.2d 545 (1966); Comm'n of Patents v. Deutsche Gold, 130 U.S.App.D.C. at 104, 397 F.2d at 665. One of the decisive questions in determining whether a claimed compound has contributed to an “advancement in the art” is whether the utility of the claimed compound is unobvious. Deutsche Gold, 130 U.S.App.D.C. at 106, 397 F.2d at 667. In the present case the prior art reference, Suter, does not disclose any specific utility for the patented compounds which would suggest that the utility of appellants’ compound was obvious.1 This was the same problem facing the court in Deutsche Gold, 130 U.S.App.D.C. at 107 n. 35, 397 F.2d at 668 n. 35. In responding to this problem the District Court in that case found that:
When the prior art does not contain the slightest suggestion that the properties of a claimed compound would make it useful for a certain advantageous purpose, then the utility itself is unobvious, and it is unnecessary for an applicant to prove by comparative tests that his compound is more useful for the certain purpose than closely related prior art compounds. 251 F. Supp. at 628.
This court approved the District Court’s ruling but noted that if limited comparative testing of the primary utility of a compound were all that was presented to the court “we, and the District Judge as well, might have required further comparative testing” 130 U.S.App.D.C. at 110, 397 F.2d at 671; however, the court did not remand the case but affirmed the grant of the patent because of secondary evidence which helped to establish that the utility of the claimed compound was unobvious.
Although evidence of a secondary or indirect utility of a claimed compound may demonstrate that there has been an “advancement in the art”, Deutsche Gold, 130 U.S.App.D.C. at 671-672,2 the District Court in the present case declined to receive evidence offered by appellants to demonstrate a secondary utility of the claimed compound. (Tr. 158-160, 180-183). Thus not only did the District Court improperly rely on structural obviousness as a basis for rejection under 35 U.S.C. § 103 (1970) but the court denied appellants the opportunity to introduce the type of evidence which this court has specifically found to be probative of a compound’s utility and unobviousness.
Since the majority’s determination of obviousness of a compound’s structure to a chemist (Majority opinion at 816) is not necessarily conclusive as to obviousness of the subject matter as a whole under 35 U.S.C. § 103 (1970), and since I think the District Court erred in its evidentiary rulings I respectfully dissent.
. The only utility claimed for the Suter compound was:
The various new arylaliphatic amines . . . are suitable for various purposes in the arts including the preparation of therapeutically useful and physiologically active amines and also as intermediates.
Suter Patent No. 2,441,518 Col. 9 Lines 56-61.
. Although the secondary evidence referred to by the court was presented to the Commissioner of Patents in Deutsche Gold the court’s statement is helpful in the present case since new evidence bearing on utility is always admissible in a 35 U.S.C. § 145, de novo proceeding in a district court. Schindler v. Comm'n of Patents, 269 F.Supp. 630 (D.C.D.C. 1967); Monsanto Co. v. Kamp, 269 F.Supp. 818 (D.C.D.C.1967).