Wednesday, November 13, 2013

In re Papesch case brief

In re Papesch case brief summary
315 F.2d 381 (1963)

Appellant challenged the decision of the United States Patent Office Board of Appeals affirming the rejection of his patent application claims on the grounds that appellant's proffered chemical compound was taught by the prior art and would have been obvious to one skilled in the Article

Appellant challenged the board's rejection of his patent claims as unpatentable. The board determined that the ethyl and n-butyl side chains depicted in appellant's claims were obvious homologs of the methyl groups shown in identical positions in the reference compound and that the method of preparation was substantially the same.


  • The court determined that the board's decision rested on one fundamental error of law, the failure to consider the biological or pharmaceutical property of the compounds as anti-inflammatory agents on the ground that to chemists the structure of the compounds would be so obvious as to be beyond doubt. 
  • The court found that the evidence produced at trial established that the compounds claimed by appellant possessed some unobvious and unexpected beneficial properties not possessed by the homologous compound disclosed in the prior art defense patents. 
  • The court held that the board's opinion and decision was contrary to well established law and reversed.

The court reversed the order of the board rejecting appellant's patent claims for chemical compound.

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