Application of Bulloch

• Decision Date: 29 November 1979
• Docket Number: Appeal No. 78-626.
• Parties: Application of David K. BULLOCH and Hong Zoon Kim.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

604 F.2d 1362

Application of David K. BULLOCH and Hong Zoon Kim.

Appeal No. 78-626.

United States Court of Customs and Patent Appeals.

September 6, 1979.

Rehearing Denied November 29, 1979.

Bertram Ottinger, New York City, attorney of record, for appellants.

Joseph F. Nakamura, Washington, D.C., for Com'r of Patents; Gerald H. Bjorge, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and KASHIWA,^* Judges.

MILLER, Judge.

This is an appeal from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board") affirming the rejection under 35 U.S.C. §§ 102(g)/103 of claims 6 and 7 of application serial No. 335,343.¹ We reverse.

BACKGROUND

The Invention

The invention relates to concentrates (aqueous solutions) for developing photographic color film. N,N-disubstituted pphenylenediamines, particularly 4-amino-N-ethyl, N-ß-methane sulfonamidoethyl-mtoluidine ("AEMT"), have gained wide acceptance as color developers.² The application discloses the use of AEMT phosphate salts (e. g., orthophosphate salt, pyrophosphate salt, and polyphosphate salt) as color developers. In their brief, appellants state that their invention "does not reside in the discovery of said chemicals, but in their use as stable color developers in concentrated form in a water solution."³ The advantages of their intention over traditional color developers, such as CD-3, are summarized thus:

The new color developing concentrate does not need an anti-oxidant. It is stable, that is to say, it does not degrade when the concentrate is permitted to stand. It does not have any deleterious photographic effects. It does not produce false colors. It does not cause migration of the colors formed. It does not fog. It does not cause the release of sulfur dioxide . . ..

These advantages have been shown by a series of comparative tests, which are reported in appellants' application, of the stability and shelf life of concentrates made from (I) AEMT orthophosphate, (II) sesqui-sulfate salt of AEMT, (III) sesqui-sulfate salt of AEMT with sodium sulfite added as an antioxidant, and (IV) AEMT orthophosphate monomethanolate (an alcoholate of AEMT orthophosphate). The specification interprets the resulting data as follows:

It is apparent that a concentrate made with the sesqui-sulfate salt of AEMT requires sulfite ions to be present if it is to be usable. The influence of the sulfite ions is seen by the differences between the results obtained with the working color developer baths including Concentrates II and III. However, a working color developer bath containing Concentrate I or Concentrate IV without sulfite in the concentrate demonstrates the distinctly superior stability of Concentrates I and IV after storage at an elevated temperature. Indeed, it has been observed that a working color developer bath containing Concentrate I or IV after storage for several weeks at 50° C with a considerably higher concentration of AEMT than the above baths containing Concentrates II and III showed distinctly superior stability to the working color developer bath containing Concentrates II and III stored for similar periods of time at similar elevated temperatures.

Appellants' claims to color developer concentrates of a Markush group of said AEMT phosphate salts have been allowed. Claim 1, from which the appealed claims depend, is illustrative of these allowed claims:

1. A stable color developer concentrate essentially consisting of a concentrated water solution of a 4-amino-Nethyl, N-beta methanesulfonamidoethyl-m-toluidene salt of a phosphoric acid selected from the group consisting of orthophosphoric acid, pyrophosphoric acid and polyphosphoric acid containing the equivalent of from about 105% to about 115% orthophosphoric acid, said salt being present in an amount such that the 4-amino-N-ethyl, N-beta methanesulfonamidoethyl-m-toluidene constitutes from 50% to 65% weight per unit volume of the concentrate.

Rejected claims 6 and 7 are to alcoholates of AEMT orthophosphate salt in stable color developer concentrates:⁴

6. A concentrate such as set forth in claim 1 wherein the N,N, disubstituted p-phenylenediamine salt is an alcoholate of an orthophosphate, of which the alcohol is selected from the group consisting of methyl, ethyl, n-propyl and isopropyl alcohols.

7. A concentrate such as set forth in claim 1 wherein the N,N, disubstituted p-phenylenediamine salt is a methanolate of an orthophosphate.

Reference Relied on by PTO

The Kroll et al. patent⁵ (hereinafter "Kroll patent") describes and claims alcoholates of AEMT orthophosphate salt and methods for making them; the utility of these alcoholates is described as follows:

The use of the new alcoholates of orthophosphate salts in photographic developing baths are sic disclosed and claimed in co-pending application Ser. No. 335,343 filed by David K. Bulloch and Hong Zoon Kim on Feb. 23, 1973 . ..

The Kroll patent also discloses that the lower aliphatic alcoholates "can be incorporated in working color developer baths to produce colored photographic images as described in the examples given by Weissberger in U.S. Pat. No. 2,193,015." Although Weissberger discloses the use of AEMT in photographic developer compositions, it was not cited by the PTO in the rejections of the appealed claims and is devoid of any information regarding the stability of the compositions.

The Declarations

Three declarations of record are important. A declaration of Harry Kroll and Alderic R. Therrien, whose patent was relied upon in the PTO's rejection, states that the subject matter of their invention (alcoholates of AEMT orthophosphate salt) was developed a few months after, and as a consequence of, the disclosure to Dr. Kroll of the subject matter of the Bulloch et al. (appellants) invention (concentrates of AEMT phosphate salts);⁶ that they did not invent the use of alcoholates, but, rather, invented the alcoholates themselves and stated in their application that the use of the new alcoholates was in accordance with the Bulloch et al. application.⁷

Two declarations by appellants state that they sent a written disclosure of their invention to several people, including Dr. Kroll; that their invention resided in stable color developer concentrates of AEMT phosphates; that they prepared and tested the concentrates, which produced the desired improved results; that a few months after they disclosed their invention to Dr. Kroll, he told them that he and Therrien had developed the alcoholates (of AEMT orthophosphate salt), which had a high yield and could be simply and economically manufactured; that they tested an alcoholate, which, when incorporated in a concentrate, was found to perform according to their invention; that they were aware that Kroll et al. filed an application for a patent on the Kroll et al. invention, which disclosed the alcoholates as well as a method of making the same; that they knew that the Kroll et al. invention was made months after their broad generic invention of concentrates of AEMT phosphates as stable color developing agents; and that they also knew that "the use of the Kroll and Therrien composition in a water concentrate" was developed by Bulloch et al. and not by Kroll et al.

Board's Decision

In reviewing the evidence, the board emphasized the following: (1) the Kroll and Terrien declaration that they invented the alcoholates but that their "use" is in accordance with the copending application of appellants; (2) appellants' acknowledgement in their specification that the "AEMT phosphate alcoholates and their method of preparation are described and claimed" in the Kroll et al. application; and (3) appellants' failure to state in their declarations that they invented the alcoholates and their indication that Kroll et al. developed the alcoholates, after which appellants tested an alcoholate in a concentrate according to their invention. The board, therefore, concluded:

Consequently, with regard to the alcoholate salt, the evidence indicates that appellants were not the inventors and the Kroll et al patent is prior art under 35 USC 102(g)/103. Thus, to the extent that the examiner's remarks are directed to claims 6 and 7, limited to concentrates containing the alcoholate, we agree that, on this record, the claims to the aqueous solution of the alcoholate compound are rendered unpatentable by the teachings in the Kroll et al patent. As noted in appellants' brief . . . at column 7, lines 36-47 of the cited Kroll patent, it is taught that the Kroll et al salts can be incorporated in working color developer baths as described in Weissberger patent 2,192,015.⁸ We consider that this clearly shows the obviousness, as meant in 35 USC 103, of said salts' corresponding incorporation in concentrates of the instant type.

In their petition for reconsideration, appellants argued that —

As inventors of the use of the concentrate genus, they should be entitled to their earlier invention date and they should be entitled to claim the use of any disclosed compound species falling within the genus, even if the species, as compounds, were the inventions of a different inventive entity than appellants.

Appellants are not claiming the alcoholates as their invention. They are merely claiming the use of these alcoholates as a concentrate, the concentrate being their invention.

In response, the board noted that an "applicant is not necessarily entitled to claim each specific embodiment embraced by his disclosed genus." It restated its conclusion that Kroll was a proper reference⁹ and declined to make any change in its previous opinion.

OPINION

Although the claims are not drafted in the usual form of use or method claims, we view the "concentrates" (containing alcoholates of AEMT orthophosphates) of the claims as limited to "stable color developers." The introductory claim language "stable color developer concentrate" is more than a mere statement of purpose; and that...