Aelony v. Arni

• Decision Date: 19 January 1977
• Docket Number: Patent Appeal No. 76-639.
• Citation: 547 F.2d 566
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: David AELONY and William J. McKillip, Appellants, v. URS ARNI et al., Appellees.

547 F.2d 566

David AELONY and William J. McKillip, Appellants, v. URS ARNI et al., Appellees.

Patent Appeal No. 76-639.

United States Court of Customs and Patent Appeals.

January 19, 1977.

Burton A. Amernick, Pollock, Vande-Sande & Priddy, Washington, D. C., attys. of record, for appellants; William Kammerer, Columbus, Ohio, of counsel.

Virgil H. Marsh, Washington, D. C., Fisher, Christen & Sabol, Washington, D. C., attys. of record, for appellees.

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

LANE, Judge.

Aelony et al. appeal from the decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (board) awarding priority of invention to Arni et al., the senior party. We affirm.

Background

This case involves a chemical interference between Aelony et al., junior party patentee, and Arni et al., senior party applicant.¹ The subject matter of the interference is a method for purifying malononitrile containing, as contaminants, similarly-boiling impurities formed in the preparation thereof. Both parties treat the impure malononitrile with a conjugated diene material to effect adduction of the impurities in accordance with the Diels-Alder reaction.² Once the impurities are thus converted to higher boiling derivatives, pure malononitrile is recovered by distillation. Aelony et al. employ only one conjugated diene, viz., cyclopentadiene, whereas Arni et al. recite eight other materials in their claims, viz., butadiene, isoprene, dimethylbutadiene, piperylene, anthracene, perylene, furan, and sorbic acid. All nine materials are recited in a Markush group in each of the five phantom counts,³ counts 1 and 3 being illustrative:

1. A method of purifying malononitrile containing as contaminants similarly boiling dienophiles formed in the preparation thereof which comprises contacting the impure malononitrile with a member selected from the group consisting of butadiene, isoprene, dimethylbutadiene, piperylene, anthracene, perylene, furan, sorbic acid and cyclopentadiene to effect adduction of said dienophiles and thereupon distilling the adduction reaction mixture to recover an overhead malononitrile fraction having a substantially reduced content of said dienophiles.

3. A method in accordance with count 2 depends from count 1 wherein the adduction of said crude malononitrile is effected at ambient temperature.

The Board

Neither party took testimony before the board. Aelony et al. urged that cyclopentadiene is patentably distinct from the mutually exclusive materials of Arni et al., as employed in the purification method of the counts, and hence there is no interference in fact. However, the board viewed the above as mere allegation by Aelony et al., unsupported by evidence in the inter partes proceeding. In the board's view, both parties carry out substantially the same process, differing only in what appears to be a patentably insignificant way. Moreover, Aelony et al. did not seek, as they might have, to establish the alleged uniqueness of cyclopentadiene by appropriate inter partes tests. Accordingly, the board determined that there is an interference in fact and awarded priority to the senior party, Arni et al.

Issue

The sole issue before us is whether there exists an interference in fact.⁴

OPINION

Jurisdiction

Initially, we note that Aelony et al., almost as an afterthought at the end of their brief before us, raise a jurisdictional question. Specifically, Aelony et al. question the board's jurisdiction (and inferentially ours as well) to resolve this interference, since its resolution involves patentability questions. First, this court has traditionally assumed jurisdiction and resolved interference-in-fact questions in priority disputes where it was essential to determine whether or not particular limitations had patentable significance in view of the prior art. See McCabe v. Cramblet, 65 F.2d 459, 20 CCPA 1220, 18 USPQ 71 (1933), where the facts are strikingly similar to those at bar. See also note 9 of Brailsford v. Lavet, 318 F.2d 942, 945-46, 50 CCPA 1367, 1372, 138 USPQ 28, 31-32 (1963), wherein the McCabe case is quoted with approval. Second, we stated recently in Nitz v. Ehrenreich, 537 F.2d 539, 543, 190 USPQ 413, 416 (CCPA 1976), that:

The existence or nonexistence of interfering subject matter goes to the very foundation on which an interference rests. Determination of the presence or absence of interfering subject matter is "logically related" to the jurisdiction-conferring issue of priority because that determination necessarily precedes a priority award. Accordingly, we conclude that the question of interference in fact presented in this case is one ancillary to priority and may be properly considered by this court. Citations and footnote omitted.

We further stated in Nitz, 537 F.2d at 543, 190 USPQ at 417:

Interference in fact is an issue ancillary to priority which the board may decide at final hearing and this court may determine on appeal.

Accordingly, we conclude that the interference-in-fact issue before us is an issue ancillary to priority, which the board had jurisdiction to resolve and which this court has jurisdiction to review on appeal.

Interference in Fact

Turning to the merits, Aelony et al. argue that the interference was improper ab initio under 35 U.S.C. § 135(a)⁵ because the cyclopentadiene material employed by Aelony et al. does not overlap the eight materials employed by Arni et al. Accordingly, say Aelony et al., there is no interference in fact. We disagree. We first note two published board opinions which addressed this same argument of no overlap, asserted in the same context as in the present case, viz., Dewilde v. Leigh, 191 USPQ 256 (PTO Bd.Pat.Int'f.1976); Moore v. McGrew, 170 USPQ 149 (Bd.Pat.Int'f.1971). In each case, the board ruled that the test of interference in fact is not whether two sets of claims overlap, but whether they are patentably distinct from each other. In each case, the board found that, although the two sets of claims before it were mutually exclusive, they were patentably indistinct, and hence there was an interference in fact. We believe that these board precedents correctly set forth the test of interference in fact and are grounded on sound policy considerations.⁶ Sections 102, 103, and 135 of 35 U.S.C. clearly contemplate — where different inventive entities are concerned — that only one patent should issue for inventions which are either identical to or not patently distinct from each other. Hence, we view the phantom count practice as a proper procedural tool established by the PTO in order to ensure, where necessary, what the statute intends, viz., that only one patent should issue for one inventive concept. Moreover, we believe that there is ample precedent from this court for framing the test of interference in fact in terms of whether two sets of claims are patentably distinct from each other. See the McCabe case, subsequently quoted with approval in Brailsford v. Lavet and in Nitz v. Ehrenreich, all three cases cited supra.

In the specific facts before us, both parties carry out the same process in which a conjugated diene material reacts with impurities according to the Diels-Alder reaction, followed by distillation of the target compound, pure malononitrile. The cyclopentadiene of Aelony et al. and the eight conjugated dienes of Arni et al. are all common Diels-Alder dienes (see note 2, supra), a fact not disputed in this proceeding. In the absence of evidence to the contrary, we view cyclopentadiene and the eight dienes of Arni et al. as patentably indistinct as employed in the purification method of the counts. We conclude that both parties are claiming the same inventive concept, and accordingly there is an interference in fact.

Aelony et al. argue that the PTO, by declaring this interference with phantom counts, in effect relied upon the equivalency between cyclopentadiene and the conjugated dienes of Arni et al. However, say Aelony et al., it is well established that the doctrine of equivalents has no applicability in interferences, citing Smith v. Stone, 420 F.2d 1065, 57 CCPA 884, 164 USPQ 453 (1970); Wetmore v. Miller, 181 USPQ 348 (Bd.Pat.Int'f.1973); Cotton de Bennetot v. Becker, 157 USPQ 62 (Bd.Pat.Int'f.1967). We believe it sufficient to note that the above cases involve either right-to-make or evaluation-of-evidence problems, which are entirely distinct from the interference-in-fact question before us. See Brailsford v. Lavet, supra, note 9 therein, 318 F.2d at 945, 50 CCPA at 1372, 138 USPQ at 31-32.

Aelony et al. also argue that the PTO, by declaring this interference with phantom counts, has attempted to circumvent the "spirit of the law" as set forth in In re McKellin, 529 F.2d 1324, 188 USPQ 428 (CCPA 1976). It is apparently Aelony et al.'s contention that Arni et al. are senior party only because Arni et al. were granted the benefit of their Swiss application 9059/68, filed June 18, 1968. Aelony et al. apparently believe that Arni et al.'s invention, based on a foreign priority date, should not bar claims to Aelony et al., even assuming that Aelony et al.'s claims are obvious variants thereof, under the McKellin case. We view this argument as rather contrived and as a distortion of the facts. We believe it sufficient to note that Arni et al. became senior party in this proceeding by being accorded the benefit of their U.S. parent application, serial No. 822,724, filed May 7, 1969, which precedes Aelony et al.'s U.S. filing date.

Aelony et al. allege that cyclopentadiene is a uniquely applicable material which can be employed at ambient temperature and short reaction times, resulting in substantial conversion of impurities to higher boiling derivatives. According to Aelony et al., cyclopentadiene is unexpectedly more effective than the materials of Arni et al., and is patentably distinct therefrom. On this point, we agree with the board...