(concurring).
While I agree with the opinion of the court that there are structural differences between the compounds of the appealed claims and the compounds of the prior art references, I think the unobviousness of the claimed invention rests on a broader base than such differences alone. Here, the “subject matter as a whole” which 35 U.S.C. § 103 requires us to examine involves also a consideration of the specific pharmacological properties asserted for the compounds. E. g., In re Papeseh, 315 F.2d 381, 50 CCPA 1084. Thus the specification discloses the use of compounds having this novel structure as cardiac anti-accelerators which, as appellant points out, are useful in treating hypertensive conditions. Appellant also points out that the novel compounds are useful as coronary dilator agents and are *768much less toxic than a previously used drug. Actual test data set forth in the affidavits of record show the coronary dilator activity and the toxicity of the claimed compounds when tested by a recognized test procedure which compares these activities with those of the standard drug, papaverine. While the data set forth in the affidavits have been criticized by the Patent Office because of the selection of compounds which were tested, I find it unnecessary to consider this aspect of the proofs. The fact is that the prior art relied upon to support the rejection does not set forth either the claimed structures or any other compound disclosed as having the particular physiological properties of the claimed compounds. Thus, I find no prior art teachings from which I could consider the differences between the claimed compounds and those of the prior art to be such that the subject matter as a whole would have been obvious to one of ordinary skill in this art.
ALMOND, Judge, with whom WORLEY, Chief Judge, joins (dissenting).
It is with deference and regret that I find myself in disagreement with the decision of the majority.
The majority opinion states that none of the references of record anticipates the claimed compounds. I agree. But direct anticipation by a single patent was never in issue here because the rejection was based on a combination of references. At the outset, it is important to note that the appealed claims, the Denton et al. references, and the Adamson reference all show diphenyl-tertiary-amino-propanols.
Graphically presented, the closest compounds of Denton et al., Adamson and the appealed claims are:
There seems to be no question that the Denton et al. references show everything claimed except the lower alkoxy substituent on the phenyl groups. The Board of Appeals recognized this deficiency, but said, “such modification is obvious, particularly in view of Adamson.” Adamson differs from the claimed structure only in the location of one of the substituted phenyls in diphenyl-tertiary-amino-propanols. Since the art is taught by Adam-son to substitute a lower alkoxy radical for a hydrogen in a phenyl group in a position isomer of the claimed compounds, such a substitution in the Denton et al. compounds would be obvious in the absence of other evidence tending to prove that it is unobvious.
Appellant understood the position of the examiner based on the similarity of structural formulae between the claims and the prior art and submitted affidavits for the purpose of proving that new and unexpected results were obtained with *769the new compounds. The affidavits were not accepted by the examiner or the board because they did not compare the prior art compounds most resembling those compounds encompassed by the claims. The argument before this court was based largely on the proposition that the applicant need not prove superiority over all of the prior art, but only over so much as he chooses to compare. Fortunately, the prevailing opinion does not adopt this proposition which would permit an applicant to test a number of prior art compounds more or less related to those of his claims and pluck the one most different for comparison in an affidavit. However, the concurring opinion would accept the proofs of the affidavit. Since a compound claim, to be patentable, must be unobvious in view of all of the prior art compounds, appellant should be required to produce a comparative showing as to the closest prior art compounds, if challenged with reasonable justification during prosecution.
The majority reaches its decision on the basis of what it terms the “Hass-Henze Doctrine.” It seems to me that “doctrines” and “legal presumptions” are too inflexible for use in cases of closely related chemical structure. Whatever “doctrine” was laid down in In re Henze, 181 F.2d 196, 37 CCPA 1009, was surely tempered by In re Mills, 281 F.2d 218, 47 CCPA 1185. The Henze case spoke of “legal presumptions” just as the majority opinion does. This court said in Mills:
“ * * * The ‘legal presumption’ as here applied by the board precludes making the factual evaluation which a chemist would make in a case such as the present. Homology per se should, therefore, be treated as a chemist would treat it, being nothing more than a fact which must be considered with all other relevant facts before arriving at the conclusion of ‘obviousness’ specified in 35 U.S.C. 103.” [281 F.2d at 224, 47 CCPA at 1192]
Another case attacking the “doctrinal” approach to homology is In re Riden et al., 318 F.2d 761, 50 CCPA 1411, which said: “The determination of obviousness is not the mechanistic overlaying of chemical formulae to observe whether a difference greater than a methylene group or a chlorine atom exists,” which is precisely what was done by the majority as to formulae (I) and (IV). This decision also quoted with approval the statement in Mills that statements applicable to particular fact situations should not be frozen into “rules of general application.”
The differences and similarities in structure are simply factors to be considered along with whatever other evidence is in the case. The evidence of different properties here is unacceptable because of remoteness. There is no satisfactory showing of unobvious properties possessed by the claimed compounds and not by at least some of the closest prior art compounds, and no other evidence is in the record showing the claimed compounds to be unobvious. Since the structural similarity in the primary references is so close, and the suggestion of substitution in the secondary reference so clear, the subject matter as a whole would have been obvious to one skilled in the art.
I would affirm.