(dissenting).
I do not agree with what seems to be the underlying concept of the majority opinion. The statement is made in the opinion that “Appellants have made no showing that the claimed intermediate has any unexpected properties * * The majority disposes of the Neipp affidavit since it shows the results of tests of a sulfa drug made from the compound claimed in rejected claim 11 when compared with a sulfa drug made from the compound of the French reference patent.
The majority states:
“ * * * We find no reason why the unexpected therapeutic properties of the sulfa drug should necessarily relate back to the intermediate, or why such properties must necessarily be attributable to one of the reactants from which it was prepared. The record shows that the therapeutic properties here belong to the sulfa drug, not to any of the compounds used in its preparation.
* * *»
The examiner’s answer in reference to the compound of appealed claim 11 states that “The compound’s only use is as an intermediate for preparation of sulfa drugs.” This being true, it seems to me appellants had no choice but to test the claimed compound in its “only use”, i. e., in terms of the sulfa drug prepared therefrom. In my opinion, the Neipp affidavit clearly establishes a result which seems clearly to be an unobvious and unexpected result.
As we stated in In re Papesch, 315 F.2d 381, 50 CCPA 1084:
“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing. The graphic formulae, the chemical nomenclature, the systems of classification and study such as the concepts of homology, isomerism, etc., are mere symbols by which compounds can be identified, classified, and compared. But 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.”
No useful purpose is here served by reviewing what I think are the pertinent cases so thoroughly treated by Judge Rich in the Papesch opinion. Of these cases Parker v. Marzall, D.C., 92 F.Supp. *242736, seems to me to be very pertinent as applied to the present facts. There evidence of an unobvious advantage was found in the yellow azo dyes made from the claimed intermediates. Despite the fact, as stated by the board, that the decision was rendered “before the enactment of the statutory standard set forth in 35 U.S.C. 103”, it seems to me to express a proper and workable view as to the evidence admissable for showing unexpected properties in a chemical compound.
In my opinion, the best evidence of the properties of the compound claimed here is to be found by testing the product made by that compound. I can conceive of no more convincing proof of unexpected and unobvious properties of the claimed intermediate than to show those unexpected and unobvious properties of the sulfa drug made therefrom.
I would therefore reverse the decision of the board.