Patent Interference No. 103,548
Obviousness
The Decision on Motions has significantly reduced the issues for our
consideration.30
The issue is whether Lagrange's C2-C4 alkyl N-substituted indolines, and salts
thereof, would have been obvious over Konrad's claims, taking into account Konrad's
claim to a subgenus encompassing a C1 alkyl-substituent (see e.g., Konrad claim 7) in
view of the prior art as represented by the J. Chem. Soc. 1967, Grollier '500 and FR
'797 references. The burden is on Lagrange to demonstrate that the C2-C4 alkyl N-
substituted indolines of their claims are patentably nonobvious over the indolines of
Konrad's claims in view of J. Chem. Soc. 1967, Grollier '500 and FR '797.
30 The following comments were made in the Decision on Motions (paper no. 49, pp. 19-20):
The issue of whether the combination of the subject matter of Konrad claim 4 and Grollier '500
render the subject matter of Lagrange claim 29 unpatentable under 35 U.S.C. § 103 should not be
resolved on this record and, therefore, is deferred to final hearing.
Lagrange has the burden of demonstrating that the compounds of Lagrange claim 29 would have
been unobvious when considered in light of the subject matter of Konrad claim 6 and other prior art.
37 CFR § 1.638(a). Nevertheless, and without regard to which party has the burden, it seems to me
that the subject matter of Lagrange claim 29 would have been prima facie obvious when considered
in light of Konrad claim 7 and Grollier '500.
The difference between the indolines of Konrad claim 7 and the indolines of Lagrange claim 29 is
that the former have, inter alia, an N-hydrogen or N-methyl group whereas the latter claims an N-
ethyl, propyl or butyl group. The utility of the Konrad indolines and the Lagrange indolines is
essentially the same. Grollier '500, while dealing with indoles, and not indolines, nevertheless reveals
compounds with structure similar to the Konrad/Lagrange compounds. The utility of the indoles of
Grollier '500 is essentially the same as the utility of the Konrad/Lagrange compounds. Grollier '500
reveals alternative N-hydrogen and N-alkyl groups wherein the alkyl is "lower alkyl" (Konrad Exhibit 2,
col. 2, line 61). "[L]ower alkyl ... preferably denote[s] C1-C5 radicals" (Konrad Exhibit 2, col. 3, lines
20-21). The substitution of an N-ethyl group for an N-methyl group would appear to have been prima
facie obvious in view of the teaching of the interchangeability of hydrogen and alkyls of Grollier '500.
Accordingly, as a matter of law, it would appear to have been prima facie obvious to make and use an
N-ethyl indoline in a dyeing process given the prior art teachings of Konrad claim 7 and Grollier '500.
Prima facie obviousness is one thing; the ultimate conclusion of obviousness is another matter.
The ultimate issue on this record is whether the Lagrange claim 29 compounds would have been
obvious under 35 U.S.C. § 103 when considered in light of the prior art, i.e., Konrad claim 7, Grollier
'500 and the objective evidence presented by the parties. For the reasons which follow, the ultimate §
103 issue cannot be resolved at this time and, therefore, will be deferred to final hearing. An
opportunity will be given for each party to supplement its declaration evidence.
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