(dissenting in part).
While I agree fully with the majority opinion in its reversal of the board on the utility issue as to claims 1 through 5, I would, however, reverse the rejection of claims 3, 4 and 5 under 35 U.S.C. § 103 as being obvious in view of the prior art. My reasons are more fully stated in my dissenting opinion in In re Larsen, 292 F.2d 531, 49 CCPA 711.
The Board of Appeals reversed the examiner’s rejection of the compound claims 1 and 2 on the prior art. This amounts essentially to a finding that claims 1 and 2 claim an unobvious compound. The process covered by claims 3, 4 and 5 is specific to the manufacture of these compounds. It seems to me they are little more than claims to this product phrased in terms of the process by which it is manufactured. Yet the board in its opinion states:
“ * * * In essence, these claims define no more than the standard elementary textbook procedure of treating an alcohol with a halogenating agent, specifically, phosphorous oxychloride, to convert the alcohol into the corresponding halide. The British patent shows a reaction of this nature, suggesting the use of *882“halogenating reagents such as phosphorous * * * halides” in treating a related type of compound to prepare a related type of product and Everett et al. disclose the use of phosphorus oxychloride as a halogenating agent for a similar conversion of alcohol to chloride. We regard the process as being a wholly obvious one from a consideration of the cited art, despite the fact that a novel chlorinated product is obtained by starting with its corresponding hydroxylated compound. * *
[Emphasis added.]
I agree with the board that the claimed compounds are both novel and unobvious. Claims 3, 4 and 5 recite these compounds, and require that they be produced by a particular process from selected particular ingredients. All of these factors must be found to have been “obvious” at the time the “invention as a whole” was made in order to support a rejection under 35 U.S.C. § 103.
Throughout the majority opinions in the Larsen case a considerable degree of reliance was placed on the fact that Larsen’s new product resulted from the use of old known starting materials in a known process. In the present case, the claimed starting materials selected by applicants to carry out the claimed reaction to produce an admittedly novel compound are not shown to be old as in the Larsen case. It seems to me, therefore, that even the majority opinions in the Larsen case do not warrant the conclusion here reached, unless the majority in this case has indulged in the unsupported assumption that the starting materials are old.1
The difference here between the claimed process and the prior art is summarized in appellants’ brief as follows:
“The Patent Office relied upon two references, namely, British Patent 128,912 of October 30, 1919 (R 89, 91) and Everett et al Chem. Abstracts U, 1431-1432 (R 93). The British Patent shows the use of halogenating agents to convert the CH2CH2OH group to CH2CH2CI by means of phosphorus or sulpha halides but there is no specific mention of the use of phosphorus oxychloride as required by the claims and of course the compounds being produced are different. In addition, the reference carries out halogenation under pressure and heating in a closed vessel whereas appellants use room temperature and refluxing.
“The Chem Abstracts reference shows that a compound having two reactive haloalkyl groups attached to the nitrogen atom has cytotoxic activity against transplantable rat tumors but the same compounds are not involved and hence the reference is only of general, not specific, interest. It does mention the use of phosphorus oxychloride in benzene for converting OH to Cl. It will be observed that one of the authors is one of the present applicants and when the article was written the present process was not specifically known for the production of the *883new compounds of claims 1 and 2. In other words, this reference does not go far enough to make the present invention obvious or predictable and much more is necessary than the ability to halogenate an alcohol group. This is particularly true because it is impossible to forecast the activity of new compounds produced by a novel process and even those most highly skilled in this complex biological field wpuld not attempt to make any such prediction. The knowledge in the Chem Abstracts reference to the effect that di-halogenoalkyl should be present is far from enough because the molecules as a whole must be considered not fragmentary portions thereof. As the Examiner admitted and as the Board of Appeals confirmed, there is no direct analogy to be drawn between compounds of the present invention and the compounds of the references as far as claims 1 and 2 are concerned. The rejection of claims 1 and 2 on the same art was reversed by the Board of Appeals and it seems clear that such reversal should have extended also to the process claims. The Patent Office should not assume, as it has done, that the presence of the OCH2 group between the cyclic nucleus and the monocarboxylic acid or ester has no effect upon the nature of the chemical reaction. It was an error to make such an assumption especially when the Board of Appeals recognized that the compound claims were allowable subject to a determination only of the question of utility.”
It seems to me the present decision incorrectly extends the majority view in the Larsen case. I do not think a rejection based on 35 U.S.C. § 103 should be permitted to have this result, particularly when here, as in the Larsen ease, it is impossible to draw a time line between the invention of the new compounds and the invention of the process for producing them.
The “whole” invention to which reference is made in 35 U.S.C. § 103 may, as here, be so closely related that in an interference situation it would not be possible to establish a date of conception of the novel product apart from the reduction to practice of the process by which it is made. Section 381 of Robinson on Patents in referring to such a situation states:
“In many inventions the act of conception is clearly distinct, in point of time, from that of reduction; * * *. In many others the work of conception and reduction goes forward almost simultaneously, so nearly so that no date can be fixed as that before which the conception was complete and after which the reduction to practice was begun. This is true in nearly all inventions which are the result of experiment, — where the inventor, instead of evolving the entire art or instrument out of his own thought, conjectures that such an act or substance will subserve a given purpose, and having tried it, finds that it accomplishes the end. The production of a new means by this method is, equally with the former, an inventive act, but at no instant before the experiment succeeds can it be said that the conception of the invention exists in the inventor’s mind. Until that instant it is mere speculation, at most a probable deduction from facts already known; and the same act which reduces it to practice gives to the conception its definite and final form.”
Cf. Smith v. Bousquet, 111 F.2d 157, 27 CCPA 1136.
Unless we assume, as appears to have been done in the majority opinion, that the claimed compositions of matter were invented before the process was develops ed, it seems logically impossible to apply the test of 35 U.S.C. § 103 in rejecting claims 3, 4 and 5. In my opinion, inventions in these highly technical fields do not lend themselves to such sharply *884drawn lines. The difficulty in a case such as the present in separating the process embodiment of the invention from the product embodiment thereof should permit an applicant a reasonable leeway to claim his invention as embodied either in the process for producing such compounds or in the compounds themselves.
. Appellants’ attorney stated during oral argument that:
ii * * * The only basis on which patentability could be predicated here would be that we are using a different starting material, producing a different product and that product is of a highly outstanding nature * *
No discussion as to whether appellants’ starting material is old is found in the record or briefs. The only reference to this point was made at the oral argument as follows:
“Judge Rich. The compound that you start with, the second one named in the claim [claim 3], is that a known compound in the art?
“Mr. Schimmel. Yes. There’s nothing to indicate that it isn’t. I might not be so positive about that. There is nothing to indicate that it is not a known compound.”
I do not think that the above statement of opinion by the solicitor is sufficient evidence upon which to conclude that appellants’ “different” starting compounds are old.