Application of Herman Hoeksema

SMITH, Judge

(dissenting in part).

I agree with the majority in reversing the board decision with respect to claims 1-11 and affirming it with respect to claims 13-15. I cannot, however, accept the majority’s treatment of process claims 17-19.

Claim 17 is the parent claim of this group and reads as follows:

“A process for converting novobiocin in the crystalline form which *378is not readily absorbed into a readily absorbable and biologically active product which comprises hydrogenating the said novobiocin in an organic solvent in the presence of a hydrogenation catalyst effective to hydrogenate an ethenoid double-bond and recovering the hydrogenated novobiocin from the said solvent solution.”

As I view this group of claims, they define appellant’s discovery that the stable crystalline form of novobiocin, which was not readily absorbed, could be converted by hydrogenation to the readily absorbable and biologically active dihydronovobiocin. None of the references recognized the problem posed by this particular form of novobiocin as the starting material, and none taught or suggested hydrogenation as a solution to the problem. Yet the board and the majority treat claims 17-19 the same as claims 13-15 and agree with the examiner that, as stated by the board, “since it was routine practice to hydrogenate various antibiotics, particularly in order to determine structural configuration, appellant’s hydrogenation of novobiocin was obvious and routine.”

In reversing the board as to product claims 1-11, the majority recognizes that appellant made the unexpected and unobvious discovery that if he takes the particularly claimed form of novobiocin, and hydrogenates it, he will obtain a new product having very desirable properties. This discovery was his invention. It is, as a whole, the subject matter which he now seeks to patent. 35 U.S.C. § 103. The majority finds this invention to be patentable, when claimed as a product as in claims 1-11. As I see it, process claims 17-19 are but alternative ways of claiming precisely that same patentable-invention.

Less than two years ago, this court, decided the case of In re Conover, 304 F.2d 680, 49 CCPA 1205, which involved, a situation quite similar to the one now before us. To be sure, the subject matter in Conover was claimed as “a method of constructing a roller bearing,”1 and thus-cannot be classified as a “chemical case.” However, the principal stated by the-court seems equally applicable to the present chemical subject matter. As we said, 304 F.2d at 684, 49 CCPA 1210:

“ -* * * ft is our conclusion that the invention for which a patent is here sought is one of those inventions where it is doubtful whether the invention resides in the process or the structure and which may be-claimed with equal facility in terms-either of method or structure. Since both types of claims are recognized by the statute * * *, it is our opinion that both types of claims may properly be allowed to issue in. a single patent where, as here, they are but alternative expressions for defining a single invention. * * ”

If, however, this analysis of the nature of appellant’s invention be incorrect, I still would reverse the rejection of claims 17-19. Under 35 U.S.C. §§ 101 and 103 any new, useful and unobvious process may be patented, and under 35 U.S.C. § 100(b) a patentable process may be a new use of a known process. Appellant has dis'covered a new use for the known process of hydrogenating antibiotics; namely, converting crystalline novobiocin into a more absorbable product.

*379To say that this new use was obvious ignores the fact that appellant’s particular application of the old process to a particular form of novobiocin produced wholly unexpected results with respect to the properties of the product obtained thereby.

In my opinion, the majority opinion ignores the clear wording of the statute. •Congress must have meant that a process .as defined in claims 17-19 may be patent■able when it unequivocally stated that an individual may obtain a patent for a “new use of a known process.”

I would, therefore, reverse the board as to claims 17-19 as well as claims 1-11, 'while affirming it as to claims 13-15.

. It is interesting to compare claims 17-19 in the present case with claim 1 in Con-over :

“A method of constructing a roller bearing of the type employing an annular series of roller bearing elements between concentric cylindrical bearing surfaces on members which have end faces in bearing contact, such method being adapted to prevent roller skewing and including the plating of one of such end faces with a metal having non-galling characteristics when it bears upon the other of said' faces.”
Clearly, the only operative step in this-claimed “method,” i. e., “plating * * * with a metal,” was a very old and venerable process. The same is true with respect to the only operative step in claims 17-19 of appellant’s application, i. e., “hydrogenating.”