439 F.2d 1237 (Fed. Cir. 1971), 8484, In re Application of Fouche

Docket Nº:Patent Appeal 8484.
Citation:439 F.2d 1237, 169 U.S.P.Q. 429
Party Name:Application of Jean Clement Louis FOUCHE.
Case Date:April 22, 1971
Court:United States Court of Customs and Patent Appeals

Page 1237

439 F.2d 1237 (Fed. Cir. 1971)

169 U.S.P.Q. 429

Application of Jean Clement Louis FOUCHE.

Patent Appeal No. 8484.

United States Court of Customs and Patent Appeals.

April 22, 1971

Page 1238

John F. Witherspoon, Harold C. Wegner, Arlington, Va., attorneys of record, for appellant. Stevens, Davis, Miller & Mosher, Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Raymond E. Martin, Washington, D.C., Henry W. Tarring II, Falls Church, Va., of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and RE, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-3 in appellant's application serial No. 463, 936, filed June 14, 1965, for 'Dibenzocycloheptadiene Derivatives.' No claims have been allowed. We affirm as to claim 1 and reverse as to claims 2 and 3.

The invention claimed is a class of compounds having pharmaceutical utility due to their antidepressant, neuroleptic and tranquilizing properties. Claim 3 is illustrative of the appealed claims since it is drawn to the compound closest to the prior art of all the compounds within the appealed claims.

3. 10-(3-Dimethylaminopropyl) dibenzo (a, d) cycloheptadiene and its acid addition salts and quaternary ammonium derivatives. 10-(3-dimethylaminopropyl) dibenzo (a, d) cycloheptadiene has the following structural formula:

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Sufficiency of Disclosure-- Incorporation by Reference

The first issue to be decided is whether the claims are adequately supported under the first paragraph of 35 U.S.C. § 112, specifically, the how-to-make requirement. The instant specification contains no express teaching of how to make 10-(3-dimethylaminopropyl) dibenzo (a, d) cycloheptadiene, which is claimed in claim 3 and is a starting material for making other compounds covered by the claims. The specificatlon does, however, state that the compound can be 'prepared as described in Example I of our application No. '. No other identification of the referenced application was given at the time the instant application was filed. Appellant later attempted, by amendment, to change the referring language from 'our application No. ' to 'my Application Serial No. 459, 921 filed May 17, 1965.' The Patent Office did not assign this serial number to the earlier application until after the instant application was filed.

The examiner, while recognizing that a patent applicant may complete his disclosure, and hence satisfy 35 U.S.C. § 112, by reference to an earlier or concurrently filed U.S. application took the view that the original referring language was defective and hence that the amendment introduced new matter. There is no dispute that the application sought to be incorporated actually contains enough information to complete the instant specification so as to support the appealed claims. The sole issue on the § 112 rejection here is whether the original referring language was adequate to effect an incorporation by reference.

The law on this question is succinctly set forth, and some of the authorities reviewed, in Patent Law Perspectives, § A.5(1)(a) (1969-70 Annual Review). After discussion of Ex parte Harvey, 163 USPQ 572 (P.O.Bd.App.1968), in which the board held reference language adequate even though the filing date and serial number were not given, but in

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which the board also suggested that the attorney's docket number should have been used as a means of identification, the authors state:

It seems amply clear that an applicant should be permitted to incorporate the disclosure of a copending application whether or not an attorney's docket number is provided in the referencing application so long as the reference application is sufficiently well identified to distinguish it from all others.

The question to be decided here is, therefore, whether the language 'our application No., ' together with the reference to Example I thereof, distinguished the application which later received serial No. 459, 921 from all others. If it did, there can of course be no 'new matter' problems, since the amendment entering the serial number and filing date would amount to a mere change in wording.

The Patent Office position is that the language in question did not uniquely identify the application sought to be incorporated. Its reasons for this position are:

a. The use of the work 'our' would suggest that a joint application was intended, and serial No. 459, 921 is a sole application.

b. There is nothing in the referring language which would exclude the possibility that a foreign application was intended.

c. There is nothing in the referring language which would exclude the possibility that a later-to-be-filed application was intended. 1

Appellant counters these reasons with the following arguments:

a. The use of the word 'our' was an obvious slip of the...

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