Application of Fouche

• Decision Date: 22 April 1971
• Docket Number: Patent Appeal No. 8484.
• Citation: 439 F.2d 1237,169 USPQ 429
• Parties: Application of Jean Clement Louis FOUCHE.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 429, 439 F.2d 1237 (1971)

Application of Jean Clement Louis FOUCHE.

Patent Appeal No. 8484.

United States Court of Customs and Patent Appeals.

April 22, 1971.

John F. Witherspoon, Harold C. Wegner, Arlington, Va., attorneys of record, for appellant. Stevens, Davis, Miller & Mosher, Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Raymond E. Martin, Washington, D.C., Henry W. Tarring II, Falls Church, Va., of counsel.

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

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-3 in appellant's application serial No. 463,936, filed June 14, 1965, for "Dibenzocy-cloheptadiene Derivatives." No claims have been allowed. We affirm as to claim 1 and reverse as to claims 2 and 3.

The invention claimed is a class of compounds having pharmaceutical utility due to their antidepressant, neuroleptic and tranquilizing properties. Claim 3 is illustrative of the appealed claims since it is drawn to the compound closest to the prior art of all the compounds within the appealed claims.

3. 10-(3-Dimethylaminopropyl) dibenzo a, d cycloheptadiene and its acid addition salts and quaternary ammonium derivatives.

10-(3-dimethylaminopropyl) dibenzo a, d cycloheptadiene has the following structural formula:

Sufficiency of Disclosure — Incorporation by Reference

The first issue to be decided is whether the claims are adequately supported under the first paragraph of 35 U.S.C. § 112, specifically, the how-to-make requirement. The instant specification contains no express teaching of how to make 10-(3-dimethylaminopropyl) dibenzo a, d cycloheptadiene, which is claimed in claim 3 and is a starting material for making other compounds covered by the claims. The specification does, however, state that the compound can be "prepared as described in Example I of our application No. ______". No other identification of the referenced application was given at the time the instant application was filed. Appellant later attempted, by amendment, to change the referring language from "our application No. ______" to "my Application Serial No. 459,921 filed May 17, 1965." The Patent Office did not assign this serial number to the earlier application until after the instant application was filed.

The examiner, while recognizing that a patent applicant may complete his disclosure, and hence satisfy 35 U.S.C. § 112, by reference to an earlier or concurrently filed U.S. application took the view that the original referring language was defective and hence that the amendment introduced new matter. There is no dispute that the application sought to be incorporated actually contains enough information to complete the instant specification so as to support the appealed claims. The sole issue on the § 112 rejection here is whether the original referring language was adequate to effect an incorporation by reference.

The law on this question is succinctly set forth, and some of the authorities reviewed, in Patent Law Perspectives, § A.51 a (1969-70 Annual Review). After discussion of Ex parte Harvey, 163 USPQ 572 (P.O.Bd.App.1968), in which the board held reference language adequate even though the filing date and serial number were not given, but in which the board also suggested that the attorney's docket number should have been used as a means of identification, the authors state:

It seems amply clear that an applicant should be permitted to incorporate the disclosure of a copending application whether or not an attorney\'s docket number is provided in the referencing application so long as the reference application is sufficiently well identified to distinguish it from all others.

The question to be decided here is, therefore, whether the language "our application No. ______," together with the reference to Example I thereof, distinguished the application which later received serial No. 459,921 from all others. If it did, there can of course be no "new matter" problems, since the amendment entering the serial number and filing date would amount to a mere change in wording.

The Patent Office position is that the language in question did not uniquely identify the application sought to be incorporated. Its reasons for this position are:

a. The use of the word "our" would suggest that a joint application was intended, and serial No. 459,921 is a sole application.

b. There is nothing in the referring language which would exclude the possibility that a foreign application was intended.

c. There is nothing in the referring language which would exclude the possibility that a later-to-be-filed application was intended.¹

Appellant counters these reasons with the following arguments:

a. The use of the word "our" was an obvious slip of the tongue, arising from the fact that in most countries application for a patent is made in the name of the assignee. (Apparently it is customary to refer to a corporate assignee in the plural number.)

b-c. It is unreasonable to conclude that a foreign or later-filed application was intended, since an applicant could obviously derive no benefit, under United States law, from incorporating a foreign or later-filed application by reference.

Appellant further urges that he was led to employ the procedure used here by the Manual of Patent Examining Procedure, § 608.01(p) of which then provided, in part:

If a concurrently or previously filed application of the same inventor adequately discloses the preparation of the starting material, amendments to include reference to such application by serial number and a general method of preparation are proper.

Appellant views this provision as permitting incorporation by reference by amendment even where the originally filed application contained no attempt whatever to incorporate another application. He argues that the Patent Office should not be permitted to change its position and apply the new position against him, after he was led astray by its first position. We need not decide the merits of appellant's contention in this regard, since we find the board's decision on the § 112 rejection reversible on the considerations previously mentioned.

While the board was undoubtedly correct in pointing out that appellant could have used a more precise identification technique in referring to the earlier application, and while the solicitor is correct in pointing out that the technique used does not absolutely distinguish the application sought to be referenced from all other possible applications, we find that the identification was reasonably precise.

First, there is some merit to appellant's rebuttal arguments, supra, that it would be unreasonable to read the referring language as pertaining to anything but an earlier or concurrently filed United States application.

Second, it is undisputed that, at the time of filing the present application, appellant in fact had on file in the Patent Office an application containing enough information to complete his disclosure as to the appealed claims. It is therefore clear that he had solved, as of his present filing date, any technical problems involved in making and using the claimed compositions. This is a major consideration in judging compliance with the first paragraph of § 112. See In re Argoudelis, 434 F.2d 1390, 58 CCPA (1971), and especially Judge Baldwin's concurring opinion therein.

Third, application serial No. 459,921 does in fact contain an "Example I" disclosing a method for preparing 10-(3-dimethylaminopropyl) dibenzo a, d cycloheptadiene. We note that in Ex parte Harvey, supra, the board looked to the nature of the subject matter disclosed in the earlier application as one means of linking that application to the referring language.

Fourth, there has been no showing by the Patent Office that there existed any other application to which the referring language could have pertained.

For these reasons we hold that the language employed in the present application adequately incorporated the disclosure of previously filed application serial No. 459,921 by reference and hence that the amendment to specify the serial number and filing date did not introduce new matter into the specification. In view of the result we have reached on this point, we need not consider appellant's alternative argument that the method of preparing the compounds in question was within the skill of the art and not required for support of the claims.

Obviousness

The board also affirmed the examiner's rejection of all claims as obvious over Villani.² In treating this rejection we again select claim 3 as illustrative, since it is drawn to the one compound, of all those covered by the appealed claims, which is closest to the prior art, i. e., to Villani.

It will be recalled that the structural formula of the principal compound claimed in claim 3 is

Villani discloses two series of 5-aliphatic substituted derivatives of dibenzo a, d cycloheptadiene, one series being saturated and the other unsaturated. As a specific member of the saturated series, Villani discloses as isomer of the above compound of claim 3. The structure of the isomer is

As a specific member of the unsaturated series, Villani discloses a compound, known commercially as amitriptyline, having the following structure It will be noted that in the isomer the dimethylamino group is attached to the cycloheptadiene ring through a CH2 group, by a single bond, and hence is saturated in the same sense that the claimed compound is saturated; in amitriptyline the dimethylamino group is attached to the ring through a CH group, by a double bond, and hence is unsaturated in that sense. Villani discloses that each series of compounds has medicinal properties related to the central nervous system.

It was the view of the examiner that the disclosure by Villani of...