Fields v. Conover
Citation | 443 F.2d 1386,170 USPQ 276 |
Decision Date | 01 July 1971 |
Docket Number | Patent Appeal No. 8516. |
Parties | Thomas Lynn FIELDS, et al., Appellants, v. Lloyd H. CONOVER and Robert B. Woodward, Appellees. |
Court | United States Court of Customs and Patent Appeals |
Edward A. Conroy, Jr., Stamford, Conn., attorney of record, for appellants. Harry H. Kline, Stamford, Conn., of counsel.
Nicholas E. Oglesby, Jr., Wilmington, Del. (Connolly & Hutz), Wilmington, Del., attorneys of record, for appellees.
Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and LANDIS, Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Board of Patent Interferences awarding priority to Conover and Woodward (hereinafter Conover), the senior party. Fields, Wilkinson and Kende (hereinafter Fields) appeal solely on the ground that Conover's application, serial No. 209,269, filed July 11, 1962, does not support the counts, which were copied from Fields' patent No. 3,167,579, issued January 26, 1965, on an application filed October 22, 1962. Neither party took testimony. We reverse.
The subject matter of this interference is substituted 4, 10-dioxo-5-hydroxy-1, 2, 3, 4, 4a, 9, 9a, 10-octahydroanthracenes. Count 1 is as follows subparagraphing and numbering of the relevant carbon atoms supplied):
Count 2 is for 8-chloro-1, 2, 3, 4, 4a, 9, 9a, 10-octahydro-4, 10-dioxo-5-hydroxy-2-anthraceneglycine, a species encompassed within the genus of count 1 which may be represented by the following structural formula:
Appellant Fields' patent discloses that "The novel compounds of the present invention are particularly useful as chelating, complexing or sequestering agents for polyvalent metallic ions," that they are also "biologically active and have been found to possess antibacterial activity," and that they "may also be useful in the synthesis of physiologically active antibiotics of the tetracycline series." Fields' patent is assigned to American Cyanamid Co., while Conover's application seems to be assigned to Chas. Pfizer & Co., Inc.
The Conover process starts with known 3, 4, 10-trioxo-1, 2, 3, 4, 4a, 9, 9a, 10-octahydroanthracenes and converts them to tetracyclines by means of a multi-step reaction sequence in which several alternative routes exist for the conversion of various of the starting materials to various of the end products. This reaction sequence is illustrated by a flow sheet on which there are eleven structural formulae, one of which is number XXII:
On the following pages, the substituents in the above formula are defined as follows:
We have set forth the above definitions at length to emphasize the scope of the Conover teaching. However, it is conceded by Fields that the counts "find support" in the Conover application in the sense that "the particular group of compounds defined by the counts" may be arrived at by "a judicious choice from among the incredibly large number of possible substituents * * * assigned to formula XXII * * * of the Conover et al. application." Specifically, compounds defined by formula XXII lie within count 1 if (1) Conover's X is hydrogen or chloro at the 8-position, (2) X1 is hydrogen, (3) X2 is hydroxy at the 5-position, (4) A is hydrogen, (5) A1 is hydrogen, (6) R2 is hydrogen or lower alkyl, (7) R3 is hydrogen or methyl, (8) R4 is hydrogen or methyl, and (9) X5 is CH2 or CH (carboxy).1
The board, starting with one of the 100 substituted amino acetates listed in Conover's Example LXIII,2 traced its way through Example LXV, Example LXXXVI, and the first sentence of the last paragraph of Example LXXXVII to arrive at a chemical differing from that recited in count 2 only in that it contains a 5-methoxy group in place of the 5-hydroxy group recital in that count. For the final reaction, the board relied on the last two sentences of the last paragraph of Example LXXXVII, which state:
The ether * * * groups present are converted to hydroxy * * * groups by treatment with hydrogen bromide in accordance with known procedures. The amphoteric products are obtained by careful neutralization with NaHCO3.
The board specifically found that "procedures for converting aromatic ethers to aromatic hydroxy compounds are well within the skill of the art," relying on "A well known textbook of organic chemistry" published in 1950 which states that 48% hydrobromic acid is a superior reagent for ether cleavage and on two working examples in Conover which teach analogous reactions with other compounds. In the particular reaction sequence traced by the board, this final reaction is said to result in the compound recited in count 2, and, on this basis, the board held that "the disclosures of these examples i. e., Examples LXIII, LXV, LXXXVI, and LXXXVII are linked so that by following out these processes the compound of count 2 must inevitably be formed." Accordingly, the board awarded priority to Conover on both counts.
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