Application of Wilkinson, Patent Appeal No. 6723.

• Decision Date: 11 July 1962
• Docket Number: Patent Appeal No. 6723.
• Citation: 304 F.2d 673,134 USPQ 171
• Parties: Application of Raymond G. WILKINSON and James H. Boothe.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

134 USPQ 171, 304 F.2d 673 (1962)

Application of Raymond G. WILKINSON and James H. Boothe.

Patent Appeal No. 6723.

United States Court of Customs and Patent Appeals.

July 11, 1962.

Norton S. Johnson, Stamford, Conn. (William P. Spielman, Washington, D. C., of counsel), for appellants.

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

Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

WORLEY, Chief Judge.

Appellants applied for a patent on "Nitriles of the Tetraclines"¹ in February 1955. The examiner rejected the application on the single reference Stephens et al., an article disclosing the preparation and identification of the claimed compound, which was published in a scientific journal in July 1954.

Appellants attempted to overcome the rejection by filing affidavits pursuant to the provisions of Rule 131, 35 U.S.C.A. Appendix.² In holding those affidavits insufficient to overcome the reference, the examiner stated that they "lacked the essential element of utility which is necessary for the reduction of the invention to practice and thus a completion thereof." In affirming, the board said:

"We agree with the examiner\'s position that in order to overcome the reference, it was necessary for the appellants herein to show complete reduction to practice of the invention and particularly to show the utilization of the compound. * *"

Summarizing the facts of record as we understand them, we have the following situation:

1. The Stephens publication discloses the claimed compound and its identification. It does not allege a use for the compound, it does not show a use, nor is any use alleged to be obvious.

2. Appellants' affidavits prove that appellants had made and identified the claimed compound prior to the publication date of the Stephens reference. The affidavits do not allege a use for the compound, they do not show a use, nor is any use alleged to be obvious.

3. The legal adequacy of the present application for a patent on the compound is not questioned.

Since the Stephens reference does not allege or disclose a use, nor is a use alleged to be obvious, the issue is whether, under such circumstances, appellant can properly be required to show an actual reduction to practice, including a showing of use, to overcome the reference. In other words, if Stephens shows A, can appellant be compelled to show A plus B before he can overcome Stephens? We do not think so, nor do we find any authority for such a requirement in the cases relied on below.³

We acknowledge the varying degrees of relevance of the cases cited below, as well as by opposing counsel here, but find none, including In re Stempel, 241 F.2d 755, 44 CCPA 820, sufficiently in point with the precise fact situation at bar to be controlling.

Since appellants have satisfactorily shown they did everything done by Stephens prior to the latter's publication date, they have overcome Stephens as a valid ground of rejection. Thus, we are obliged to reverse the decision appealed from.

Reversed.

MARTIN, Judge, concurs in result only.

RICH, Judge (concurring).

I concur in the result. The principles I believe to be applicable here are stated in In re Stempel, 241 F.2d 755, 44 CCPA 820. The principles to which I refer are set forth, point by point, in the last six paragraphs of the opinion.

I also wish to express full agreement with Judge SMITH's concurring opinion.

SMITH, Judge (concurring).

While I am in full agreement with the result reached by the majority, its opinion does not set forth certain fundamental considerations which have influenced my views.

The facts of the present case lead me to the same conclusion as that reached by the majority, i. e., since the Stephens et al. reference discloses the claimed compound and its identification but does not allege nor show a use, then all appellants need to show in their affidavit under Rule 131 to overcome the effect of the Stephens et al. publication is that they made and identified the claimed compound before the effective date of the publication.

As summarized in the solicitor's brief:

"* * * Although the statutes nowhere expressly provide that the bar of a novelty negativing reference may be overcome or removed, Rule 131, like its predecessor Rule 75, provides the means and manner in which an applicant may overcome the apparent lack of novelty because of an earlier publication, and, therefore, an apparent bar, under 35 U.S. C. 102(a). * * *" Emphasis added.

No doubt the solicitor meant that the statutes provide no procedure for overcoming a reference which only prima facie negatives novelty. This is not unusual. But the statutes do give a right for which some procedural remedy is necessary.

The solicitor's brief summarizes what has been said in many of the decisions in which former Rule 75 and present Rule 131 have been considered as follows:

"* * * The language of the rule and its interpretation through almost a century all combine to show that, while paragraph (b) of present Rule 131 is new, it merely incorporates the practice and construction which was considered implicit in the old rule. Hence, to apply correctly and properly the requirements of the rule it is essential to know what the terms `completion of the invention\', and `reduction to practice\' mean in interference law and practice."

The solicitor then argues that the present issue should be determined by analogy to an interference proceeding. While there is no issue here of priority between rival inventors in the sense of an interference proceeding arising under 35 U.S.C. § 102(g), it seems to me that if the solicitor's argument is to be pursued, it is necessary to first assume that the reference publication stands in the position of a prior filed application¹ In this situation Rule 202 presumably would be addressed to appellants who, in this analogy, stand in the junior party position. The statement showing prior conception of the invention contained in appellants' affidavit under Rule 131 would in my opinion be sufficient under Rule 202 "to establish conception of the invention under consideration for the purpose of establishing priority of invention". Emphasis added.

If we are to pursue the interference analogy suggested by the solicitor to this point, it then seems to me the analogy should be pursued to its logical end. On this basis, the reference publication, when viewed in the light of an inter partes interference proceeding, would not constitute a constructive reduction to practice of the invention. It would have no "effective date" as a reduction to practice under the applicable principles of patent interference law. On this basis, therefore, appellants should prevail on their application since they are entitled to its filing date as a constructive reduction to practice, which on the present record is the earliest date established for any reduction to practice.

Thus, I would agree with the position taken in appellants' brief that:

"If this were an interference, appellants would only have to show that they were first to conceive the compound of Claim 15. This would entitle them to priority because:

"(a) The Stephens et al. publication is evidence of conception only; not of reduction to practice. In re Schlittler et al. 234 F.2d 882, 43 C.C.P.A. 986; 110 U.S.P.Q. 304.

"(b) Appellants are the first to reduce their claimed invention to

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