Application of Clarke

• Decision Date: 10 March 1966
• Docket Number: Patent Appeal No. 7489.
• Citation: 148 USPQ 665,356 F.2d 987
• Parties: Application of Robert L. CLARKE.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

148 USPQ 665, 356 F.2d 987 (1966)

Application of Robert L. CLARKE.

Patent Appeal No. 7489.

United States Court of Customs and Patent Appeals.

March 10, 1966.

Laurence & Laurence, Washington, D. C. (Dean Laurence, Herbert I. Sherman, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

MARTIN, Judge.

The issue in this appeal from the Board of Appeals is whether Rule 131 affidavits that show certain facts about species of a claimed genus, and that also allege conception of the genus, are sufficient to antedate indirectly a reference disclosing a different species within the claimed genus. This issue arises with respect to generic claims 1 and 2 in appellant's application serial No. 836,911, filed August 31, 1959, for "1,2-Diacylhexahydropyridazines and Preparation Thereof."

The claims read:

1. 1,2-Diacylhexahydropyridazine in which each acyl is -CO-R wherein R is a member of the group consisting of hydrogen and a hydrocarbon radical having from one to nine carbon atoms.

2. 1,2-Bis (lower-alkanoyl) hexahydropyridazine.

The hexahydropyridazines are a type of bis-amides which are disclosed as having antiviral and diuretic activity with low toxicity in mammals. Structurally, the compounds may be represented thus:

The definition of R as "hydrocarbon" is disclosed in the application as:

* * * In the above general formula * * *, when the R\'s represent separate radicals, they are preferably identical. When R represents a hydrocarbon radical, it preferably stands for an aliphatic hydrocarbon radical, either saturated or unsaturated, straight or branched; a cycloalkyl radical; a monocarbocyclic aromatic hydrocarbon radical; or a combination of the foregoing radicals. Thus, included in the definition of R are alkyl, for example, methyl, ethyl, propyl, isopropyl, butyl, tertiary-butyl, hexyl, octyl and nonyl; alkenyl, for example, vinyl, 1-propenyl, allyl, 3-hexenyl and 4-octenyl; alkynyl, for example, ethynyl, propargyl and 3-hexynyl; cycloalkyl, for example, cyclopropyl, cyclobutyl, cyclopentyl, cyclohexyl, 4-methylcyclohexyl, 2,6-dimethylcyclohexyl, and cyclooctyl; cycloalkylalkyl, for example, cyclopentylethyl and cyclohexylmethyl; monocarbocyclic aryl, for example, phenyl, p-tolyl, 3,5-dimethylphenyl and 3-ethylphenyl; and monocarbocyclic aryl-loweralkyl, for example, benzyl, 2-phenylethyl and 3-phenylpropyl. (Emphasis ours.

Appellant further discloses a genus of compounds, having the same properties, in which the two R's of the above structure can be joined to form an alpha, betalower-alkylene bridge (hereinafter referred to as bridge compounds).¹

The reference relied on by the Patent Office as an anticipation within the meaning of 35 U.S.C. § 102(a), is a publication of Stetter et al. (Stetter) appearing in Vol. 91 of Chemiche Berichte, pp. 1982-8, under date of September 15, 1958. Since that date of publication is less than one year prior to the application date herein there is no question of a statutory time bar under 35 U.S.C. § 102(b). It is acknowledged by appellant that since Stetter shows a compound which falls within the scope of the generic claim it is an anticipation, provided Stetter is available as a reference.

Referring to the structure diagrammed above, Stetter shows a compound in which the R groups are each isopropyl (Stetter's Compound VII), and a second compound in which the two R groups taken together are an ethylene bridge between the amide groups, thus forming a second ring (Stetter's Compound XI). Stetter shows Compound VII to be an intermediate in a chemical synthesis which can be described broadly as the preparation of cyclic diamines by opening the rings of intermediate bicyclic compounds.²

In an attempt to remove Stetter as a reference under section 102(a), appellant filed a first affidavit under Rule 131 that shows reduction to practice, prior to the effective date of Stetter, of two compounds in which R in the structure shown above is respectively methyl and phenyl, and also an ethylene bridge compound, Stetter's Compound XI. On the basis of that showing, the examiner allowed four claims: claim 3, a broad or "generic" claim to bridge compounds which includes the bridge Compound XI of Stetter; and three species claims, claim 4 to the methyl species, claim 5 to the phenyl species, both of these being species within rejected claim 1, and claim 6 specifically to the bridge compound, Compound XI of Stetter.

The first affidavit did not, however, relate to the isopropyl species, the Stetter Compound VII, which falls within the scope of claims 1 and 2 on appeal. Since the examiner considered that affidavit insufficient to remove the generic claim 1 and 2 anticipating Compound VII, appellant filed a second affidavit which alleges conception of the generic invention prior to the effective date of Stetter. Apparently appellant cannot, or cares not to show specific data as to the prior invention of the species Compound VII of Stetter. Could he, this case would be governed by In re Stempel, 241 F.2d 755, 44 CCPA 820, holding in a genus-species case that all the applicant can be required to show is priority with respect to so much of the claimed invention as the reference happens to show; when he has done that he has disposed of the reference.

Because of its import, the body of the second affidavit is reproduced in full:

I, ROBERT L. CLARKE, being duly sworn, depose and say that:

I am the Robert L. Clarke who is the applicant in the above-identified application and who executed on April 30, 1962 the Antedating Affidavit submitted with the response filed May 1, 1962 in the above-identified application;

In the United States of America prior to September 15, 1958, I conceived the broad idea of the generic invention described in the above-identified application and embodied in Claims 1 and 2 thereof and I carried out the preparation of and had testing done on exemplary compounds as described in said antedating affidavit for the purpose of verifying the operability of said broad idea of the generic invention and I concluded from said preparation and testing of the exemplary compounds that the broad idea of the generic invention was operative as I conceived it;

And further I say not.

It is the position of the Patent Office that the second affidavit is of little evidentiary value³ since it is no more than a self-serving declaration in the nature of a conclusion unsupported by corroborating affidavits or documentary exhibits, M.P.E.P. 715.05. The Patent Office contends further that, since the proof is merely that appellant preceded Stetter as to two species,⁴ the species in Stetter which remains not antedated is a sufficient basis on which to reject the generic invention of claims 1 and 2, M.P.E.P. 715.03, and In re Steenbock, 83 F.2d 912, 23 CCPA 1244. In the solicitor's view, a claim which reads on species in a reference should be denied unless each of the species is directly antedated by a showing of prior reduction to practice thereof.

Appellant's position is equally absolute, that a reference can be antedated by proof of prior inventorship of any species since generic and species claims are directed to "substantially the same overall invention * * *." Appellant also refers to the rule of interference practice, that reduction to practice of a single species may be considered proof of reduction to practice of a generic count.

Those absolute and opposite positions reflect on the failure of Rule 131, calling for antedating with respect to "the invention," to provide for the modern problems inherent in chemical Markush genus-species situations, not foreseen in 1880⁵ when the antedating affidavit practice began.

It is clear from In re Shokal, 242 F.2d 771, 44 CCPA 854, that appellant may, by a proper showing, overcome a reference which discloses a species within the generic claim, although he may not be able to show completion of that species prior to the effective date of the reference, where the reference is not a statutory time bar. Thus, indirect antedating of a reference is permitted in a proper case and the solicitor's view is contrary to existing law. However, we do not find, on the facts of this case, that appellant has established prior inventorship of so much of the invention, as defined in claims 1 and 2, as is necessary to antedate indirectly the species of the reference.

Rule 131(a) requires that facts be offered which show "completion of the invention" prior to the effective date of the reference in order to establish prima facie a case of prior inventorship. The term "completion" is further defined by the requirement of subsection (b) of Rule 131 that the facts must establish either reduction to practice, or conception coupled with due diligence until a subsequent actual reduction to practice or the filing of the application. The requirement for such facts in establishing prima facie a case of prior inventorship has been articulated in the decision of this court in In re Garratt, 63 F.2d 113, 115, 20 CCPA 878, 882, 16 USPQ 369, 372. See Ex parte Stalego, 135 USPQ 37, 38 (Pat. Off.Bd.App.1961).

Appellant does not challenge the factual showing requirement of Rule 131 as being an invalid exercise of the power granted the Commissioner under 35 U.S.C. § 6 as relating to prima facie showings in an ex parte case, or as being contrary to long-established practice, M.P.E.P. 715.03. Appellant argues that the two affidavits must be considered together, and that the facts to support the statements that the generic invention was conceived are supplied by the first affidavit. Appellant further argues that the first affidavit shows three species, and that "the two affidavits together are sufficient to constitute the requisite prima facie showing of inventorship, thereby to antedate * * * the Stetter et...