Litchfield v. Eigen, Patent Appeal No. 76-535.

• Decision Date: 10 June 1976
• Docket Number: Patent Appeal No. 76-535.
• Parties: John H. LITCHFIELD and Victor G. Vely, Appellants, v. Edward EIGEN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

535 F.2d 72

John H. LITCHFIELD and Victor G. Vely, Appellants, v. Edward EIGEN, Appellee.

Patent Appeal No. 76-535.

United States Court of Customs and Patent Appeals.

June 10, 1976.

Robert E. LeBlanc, Donald C. Casey, LeBlanc & Shur, Washington, D. C., attorneys of record, for appellants.

Max R. Millman, Philadelphia, Pa., Robert L. Stone, New York City, attorneys of record, for appellee; Millman & Jacobs, Philadelphia, Pa., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Patent Interferences (board) awarding priority to the senior party-patentee Eigen¹ against the junior party-applicants Litchfield and Vely² as to both counts in interference on the ground that Litchfield and Vely, although having been first to conceive, failed to show reasonable diligence from just prior to Eigen's conception to their reduction to practice. We affirm.

The Contested Subject Matter

The invention in interference is an oral composition, useful for the prevention of dental caries and calculus. The counts are:

1. An oral composition comprising an effective amount up to 6.25% of a nontoxic, non-volatile material selected from the group consisting of the aliphatic aldehyde glutaraldehyde and the aliphatic aldehyde oxyderivative glyoxylic acid and a dental vehicle.

2. An oral composition in accordance with count 1, wherein the aldehyde ingredient constitutes .05-6.25% by weight of the composition.

Both parties claim to have made the invention in the course of research of somewhat broader scope. Their invention histories, as set out in the board's findings of fact, are helpful to an understanding of the issues.

A. Litchfield and Vely

Litchfield and Vely were employees of the Battelle Memorial Institute at Columbus, Ohio. In February 1962, the L. A. Dreyfus Co., a wholly-owned subsidiary of their assignee Wrigley, engaged the services of Battelle to search for anticaries agents that were nontoxic, "non-pharmaceutical" (non-prescription?) and suitable for incorporation into chewing gum. Litchfield, Vely and Arthur C. Peters comprised the Battelle research team for the project. They selected candidate anticaries agents and tested them in vitro by microbiological assay. If a candidate anti-caries agent showed a significant level of activity in vitro, it was considered for further testing in vivo. During 1962 and 1963, the research team determined that various water-soluble aldehydes should be investigated. On April 3, 1964, Vely and his assistant, Powell, tested a solution of glutaraldehyde in vitro in concentrations of 0.1%, 0.05%, and 0.025% against Streptococcus faecalis strain FA-1. No later than April 14, 1964, Vely and Powell further tested glutaraldehyde in vitro against Lactobacillus casei ATCC 4646. As a result of these tests, Litchfield and Vely concluded that glutaraldehyde showed significant activity. There was no further activity with respect to glutaraldehyde until the period September 8, 1965, through December 8, 1965, when, under Peters' supervision, a 1% solution of glutaraldehyde was tested in vivo in rats. On April 13, 1966, a report, signed by Litchfield, was issued by Battelle to Wrigley classifying glutaraldehyde in the "1-plus" category, which Peters explained meant that the test results showed about a 25% reduction in caries incidence in vivo.

B. Eigen

Eigen was section head of biochemistry at Colgate-Palmolive Company. Beginning about May 1964, Don N. Harris, a biochemist at Colgate, came under Eigen's supervision and was assigned a project of determining whether aldehydes were effective in inhibiting dental calculus. Eigen claims to have suggested using glutaraldehyde as an anti-calculus agent to Harris early in 1964; Harris, however, was unable to recall when testifying many years later, who specifically suggested the testing of glutaraldehyde. In any event, Harris entered aldehydes as possible anti-calculus agents in his notebook on April 23, 1964. On May 22, 1964, using an in vitro procedure, he tested glutaraldehyde in concentrations of 1.25%, 2.5%, and 6.25%. Based on these tests, Harris concluded that glutaraldehyde appeared to be a potential anticalculus agent. Harris discussed his conclusions from the in vitro tests with Eigen, and it was decided that glutaraldehyde should be tested in vivo. On June 25, 1964, Harris completed an in vivo test of glutaraldehyde in rats. Based on this test, Harris concluded that a 2.5% solution of glutaraldehyde produced a statistically significant reduction of calculus.

The Board's Opinion

The board noted that at final hearing Eigen admitted that Litchfield and Vely had established conception in April 1964; the board stated that the specific date was April 3, 1964, when Vely and Powell tested glutaraldehyde solutions in vitro against Streptococcus faecalis strain FA-1. As to an actual reduction to practice by Litchfield and Vely, the board found that a glutaraldehyde composition falling within the scope of the counts was composed on behalf of Litchfield and Vely during the period September-December 1965 for the purpose of testing glutaraldehyde in vivo as an anticaries agent and that the utility of the composition was demonstrated when it was determined that the composition had an anti-caries activity in the "1-plus" category, i. e., when it was demonstrated that the composition decreased caries by about 25% as compared with control animals. Even though the in vivo test was completed in December 1965, the board did not accord Litchfield and Vely that date for a reduction to practice; rather, it accorded them the date of the April 13, 1966, report by Battelle to Wrigley, wherein "the first contemporaneous recognition of a 1-plus activity for glutaraldehyde by Litchfield appears * * *."

As to Eigen, the board stated that it believed "on the basis of the record before us, that Eigen conceived of the use of glutaraldehyde as an anti-calculus agent and that Harris tested glutaraldehyde in vitro on behalf of Eigen." The board accorded Eigen a conception date no earlier than May 22, 1964, since "the first corroborated documentary evidence relating to Eigen's conception appears in Harris' notebook dated May 22, 1964 * * *." That entry sets out Harris' in vitro test of glutaraldehyde. The board found an actual reduction to practice by Eigen on June 25, 1964, when "Harris — on behalf of Eigen — completed an in vivo test using a 2.5% solution of glutaraldehyde in rats and concluded from the test that glutaraldehyde produced a significant reduction of calculus," since the solution fell within the counts and a practical utility was demonstrated therefor.

Despite the earlier April 3, 1964, conception date accorded Litchfield and Vely, the board awarded priority to Eigen because Litchfield and Vely had not met their "affirmative burden of showing reasonable diligence" in that they had "not shown any affirmative action toward an actual reduction to practice * * * from May 21, 1964 the day prior to Eigen's conception * * * to September 8, 1965 * * * when in vivo tests were begun," nor had they shown an acceptable excuse or reason for their failure to take affirmative action during that period. The board was not persuaded by the assertion of Litchfield and Vely that the record excused their failure to take affirmative action during the critical period because it established that they were testing many other compounds according to "the regular procedure for testing compounds in order, within budgetary limits as animals became available * * *." The board stated that Litchfield and Vely had not offered "a...