444 F.2d 572 (Fed. Cir. 1971), 8437, In re Application of Moore

Docket Nº:Patent Appeal 8437, 8479.
Citation:444 F.2d 572, 170 U.S.P.Q. 260
Party Name:Application of Earl Phillip MOORE. Application of Harold M. PITT and Harry Bender.
Case Date:July 01, 1971
Court:United States Court of Customs and Patent Appeals
 
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Page 572

444 F.2d 572 (Fed. Cir. 1971)

170 U.S.P.Q. 260

Application of Earl Phillip MOORE.

Application of Harold M. PITT and Harry Bender.

Patent Appeal Nos. 8437, 8479.

United States Court of Customs and Patent Appeals.

July 1, 1971

Rehearing Denied Oct. 7, 1971

Page 573

Francis A. Paintin, Wilmington, Del., attorney of record, for Earl Phillip Moore. James T. Corle, Arlington, Va., and Gerald A. Hapka, Arlington, Va., of counsel.

Wayne C. Jaeschke, Dobbs Ferry, N.Y., attorney of record, for Harold M. Pitt and Harry Bender. Martin Goldwasser, Dobbs Ferry, N.Y., and Edwin H. Baker, Richmond, Cal., of counsel.

S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. R.E. Martin, Washington, D.C., of counsel.

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

BALDWIN, Judge.

There two appeals from separate decisions of the Patent Office Board of Appeals were argued on the same day, considered together and will be disposed of in a single opinion. The issue we find determinative in both appeals is whether an antedating affidavit must include therein a showing of prior discovery of a utility for a particular chemical compound, in order to be effective in removing a reference against a claim to that compound or the method for its production, where the reference describes the compound and how to make it but fails to disclose a utility therefor, no utility being obvious.

APPEAL NO. 8437

Outline of the Proceedings Below

The single claim before us in the application 1 involved in this appeal is drawn to the compound 'perfluorodicyclopentadiene' (hereinafter PFDC). This claim was rejected by the examiner under 35 U.S.C. § 102 as being 'fully met' by the disclosure in an article appearing in a British chemistry journal. 2 The cited reference describes the preparation of the compound 'perfluorocyclopentadiene' (hereinafter PFC). In a discussion of some of the chemical and physical properties 3 of PFC, it is disclosed that the compound 'dimerizes at room temperature.'

There appears to be no question that the claimed PFDC is the dimer of the compound PFC or that the cited publication

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contains a legally sufficient description of the claimed compound and how to make it. We are, however, confronted with the threshold issue of whether the reference disclosure contains a suggestion of utility for the dimer.

Appellant's antedating affidavit, purporting to have been filed under Patent Office Rule 131, 4 the adequacy of which affidavit is in question here, concededly shows identification and preparation of the claimed compound and asserts that these acts were carried out prior to any date to which the reference disclosure would be entitled. The affidavit does not, however, contain any mention of a utility for the compound and none is alleged to have been obvious.

The examiner evidently was in agreement with appellant that the reference contained no disclosure as to utility. He nevertheless held the affidavit ineffective because there was no mention of utility contained therein. The Board of Appeals sustained the examiner on this point but then went further and held the affidavit deficient on the alternative ground that the reference disclosure did make a utility for the claimed compound obvious. The board stated:

The reference indicates uses for the monomer which would also be fully expected to inhere in the dimer because of the same reactive groups. Note especially the permanganate oxidation to form a mixture of oxalic and difluoromalonic acids.

Appellant thereafter attempted to convince the board that its position with regard to a suggestion of utility for PFDC in the reference was wrong. He filed an affidavit by one Barney, whom the board had previously characterized as 'an expert in this art', which set out the affiant's opinion that 'from a study of the structure of the latter compound (PFDC) it would not appear that (permanganate oxidation of PFDC) would be capable of forming oxalic and difluoromalonic acids'. The board treated this affidavit as having 'no status except as an argument', and held to 'the view that Banks et al. suggest a utility'.

The Issue Narrowed

Again we are confronted with a set of circumstances which occurs too frequently in Patent Office appeals. In its review of the examiner's decision in this case, as noted above, the board made a ruling based not upon the facts or record which it had before it, but rather on a finding of a new fact. We recognize the right of the board, under the statute and rules, to make additional findings. We also acknowledge the technical expertise of the individual members of the board in making findings of technical fact based upon their own knowledge and experience. We have consistently sought to give weight to such findings where they do not appear unreasonable on their face and are not challenged by the applicant.

A finding such as was made here, however, supporting as it does an alternative

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ground for sustaining the examiner's rejection, and apparently based on nothing more than a bare allegation of scientific fact, does everything but cry out for an opportunity to respond. Appellant here did respond, and challenged the board's assertion with an allegation of his own to the contrary. He supported his assertion with the affidavit opinion of an acknowledged expert in the art. Encouraged and misled, perhaps, by some language in earlier opinions of this court, the board gave little consideration to appellant's assertion. This we feel was wrong. Appellant's response here was more than mere 'argument'. It was a direct challenge to a finding of fact made for the first time by the board and included with it some evidence in the nature of rebuttal. Under the circumstances, it was entitled to more serious consideration. We shall so treat it.

The contrary assertion made by appellant also does not appear unreasonable to us. In the absence of any cited authority or more detailed reasoning by which we could better evaluate the positions taken, we are compelled to conclude that the Barney affidavit is sufficient to rebut the assertion made by the board and negate its alternative ground for finding the antedating affidavit ineffective. Accordingly, the remainder of this opinion and our decision will be based on the assumption that the cited reference neither contains a disclosure of nor suggests a utility for the claimed compound.

APPEAL NO. 8479

The invention involved in this appeal relates to a process of producing chlorinated unsaturated hydrocarbons by reacting either of two chlorinated ethylenes with any one of five specified compounds. The specification discloses that certain of the products of that process may be polymerized and used as caulking compounds, adhesives or potting resins.

Claims 1 and 10 5 relate to appellants' process in its broadest aspect, so far as concerns the reactants, each being set forth in Markush form. Claims 8 and 12 are directed respectively to appellants' specific process for producing the compound 1, 1, 2-trichloropentadiene and to the corresponding product of that process, i.e., the compound itself.

The claims were rejected in view of the disclosure in an article appearing in a Russian journal of chemistry. 6 That article concededly contains a description of the product of claim 12 and of a...

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