Driscoll v. Cebalo
| Decision Date | 06 April 1984 |
| Docket Number | 98208,Nos. 97757,83-654,Nos. 83-968,s. 83-968,s. 97757 |
| Citation | 221 USPQ 745,731 F.2d 878 |
| Parties | Patrick R. DRISCOLL, Appellant, v. Tony CEBALO and Robert A. Walde, Appellees, v. Karl HOEGERLE, Hans Cellarius, Paul Rathgeb, and Jurg Rumpf, Appellees. Tony CEBALO and Robert A. Walde, Appellants, v. Patrick R. DRISCOLL, Appellee, v. Carl METZGER, Ludwig Eue, and Helmuth Hack, Appellees. AppealInterference |
| Court | U.S. Court of Appeals — Federal Circuit |
Donald A. Peterson, Chicago, Ill., argued for appellants. With him on brief were Kenneth R. Adamo and Herbert D. Hart, III, Chicago, Ill.; Leroy Whitaker, Indianapolis, Ind., of counsel.
Peter G. Dilworth, Garden City, N.Y., argued for appellee Driscoll. With him on brief were Stephen D. Murphy and Rocco S. Barrese, Garden City, N.Y.
Before DAVIS, Circuit Judge, NICHOLS, * Senior Circuit Judge, and MILLER, Circuit Judge.
These consolidated appeals under 35 U.S.C. Sec. 141 (1976) arose out of two interferences in which the Patent and Trademark Office Board of Patent Interferences ("board") awarded priority to Patrick R. Driscoll ("Driscoll") in Interference No. 98,208 (one phantom count) and to Tony Cebalo and Robert A. Walde ("Cebalo") in Interference No. 97,757 (two counts). Both Cebalo and Driscoll appeal from the awards of priority in the respective interferences; Driscoll also appeals from the board's dismissal of the fraud issue (belatedly raised in his brief below) in Interference No. 98,208.
The dispositive issue is whether the party Cebalo violated his duty of disclosure owed the Patent and Trademark Office ("PTO") during prosecution of his series of applications involved in both interferences. Because, as we hold, Cebalo violated his duty, the board's decision in favor of Cebalo in Interference No. 97,757 must be reversed, and its decision in Interference No. 98,208 in favor of Driscoll must be affirmed.
The party Driscoll filed his patent application, Serial No. 113,679, on February 8, 1971, and was accorded the benefit of his earlier applications, Serial No. 702,189, filed February 1, 1968 (as to Count 1 only), Serial No. 782,756, filed December 10, 1968, and Serial No. 818,078, filed April 21, 1969, under 35 U.S.C. Sec. 120. The junior party Cebalo filed two continuation-in-part applications (Serial Nos. 762,604, September 25, 1968, and 856,461, September 9, 1969) and was accorded the benefit of his earlier parent application, Serial No. 712,585, filed March 13, 1968, under 35 U.S.C. Sec. 120. 1
The subject matter of Interference No. 97,757 involves certain thiadiazole urea compounds having utility as herbicides. The two counts of the interference are directed to fluorinated organic compounds as follows:
1. A compound as defined in claim 1, 2 which is N-[5-trifluoromethyl-1,3,4-thiadiazolyl (2) ]-N'-methyl urea.
2. A compound as defined in claim 1, which is N-[5-trifluoromethyl-1,3,4-thiadiazolyl (2) ]-N, N'-dimethyl urea.
Driscoll filed a motion to strike the Cebalo application and to deny Cebalo the benefit of his earlier-filed application for violation of 37 C.F.R. Sec. 1.56--specifically for fraud in withholding a prior art reference. Treating Driscoll's motion as a petition to strike pursuant to said rule, the Commissioner of Patents and Trademarks deferred action on the motion, on related oppositions, and on certain declarations, pending final decision by the board on the question of priority and all ancillary issues. The fraud issue was deemed by the board to be ancillary to priority and was briefed.
Claim 1 of Cebalo's parent application reads as follows:
and tautomers thereof:
wherein A is a substituent selected from the group consisting of C1 -C7 acyclic hydrocarbon radicals and halogenated derivatives of said radicals, wherein each halogen is independently selected from the group consisting of F, Cl and Br; and
B is a substituent selected from the group consisting of lower acyclic hydrocarbon radicals, phenyl, monosubstituted phenyl and poly-substituted phenyl wherein each substituent is independently selected from the group consisting of:
(a) Cl
(b) Br
(e) a lower alkyl radical
(f) a lower alkoxy radical, and
(g) the group:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
wherein each D represents an independently selected lower alkyl radical.
Thus, claim 1, as originally filed, encompasses compounds in which the 5-position of the heterocyclic ring is substituted with either a nonfluorinated alkyl group (which includes a lower alkyl group) or a fluorinated alkyl group. The compounds encompassed by claim 1 and having a fluorinated alkyl group serve as key starting materials for the compounds of the counts of Interference No. 97,757, and the compounds having a nonfluorinated alkyl group serve as key starting materials for compounds of the single phantom count of Interference No. 98,208.
In the "Prior Art" section of the application, Cebalo disclosed two references: J. Pharm. Soc. Japan 74, 1044-8 (1954), which discloses "somewhat related compounds" such as 1-(5-methyl-1,3,4-thiadiazol-2-yl)-3-phenylurea, and an article in Farmaco Ed. Sci. 22(6), 393-401 (1967), which "discloses the use of 1-(5-alkyl-1,3,4-thiadiazol-2-yl)ureas as intermediates for the production of isomeric 1,3-bis-(5-alkyl-1,3,4-thiadiazol-2-yl)ureas."
Cebalo did not cite Canadian Patent No. 745,623, issued November 1, 1966 ("Canadian patent"), which discloses "agents for combating pests especially weeds and phytopathogenic microorganisms" containing a compound of the general formula:
It is clear that the Canadian patent discloses compounds in which the 5-position of the ring is substituted with, inter alia, a nonfluorinated lower alkyl group.
An employee with the Patent Department of Cebalo's assignee prepared a 15-page "Art Search" report, dated August 3, 1967, which stated that "[t]he principal references are to Ciba's Canadian [i.e., the Canadian patent] and Belgian 2,5-substituted thiadiazole patents ...." The report discussed the relevance of the Canadian patent as well as the fact that it specifically sets forth the following compound, in which the 5-position is substituted with a nonfluorinated methyl group:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
[Example 2(a) of the Canadian patent.] After some input from the inventors, Cebalo's attorney prepared a draft application, including claim 1, encompassing compounds having either a fluorinated or nonfluorinated alkyl group in the 5-position of the heterocyclic ring, and forwarded it to Doctor Cebalo for review on February 12, 1968. Doctor Cebalo returned the draft application to the attorney about ten days later with the following note on Claim 1:
Note [blur] A good deal of what we claim here is claimed in the attached sheets from Canadian Patent 745,623.
Doctor Cebalo later testified that he then realized that "a good deal of the compounds" disclosed by the reference could not be tautomerized, as he at first had believed, and, "[t]herefore, I came to the conclusion that the patent was inoperable, and, therefore, I concluded that it was not a valid reference and it need not be considered." Doctor Cebalo's co-inventor (Walde) testified to the same effect. However, Doctor Cebalo admitted under cross-examination that Example 2(a) () of the Canadian patent was included within the scope of claim 1 of the parent Cebalo application. Claim 1 was not substantially changed by the Cebalo attorney before filing and was carried forward into Cebalo's two subsequent continuation-in-part applications. The parent and the first continuation-in-part application were permitted to become abandoned in response to requirements for restriction with no prosecution on the merits. During prosecution of the second continuation-in-part (the application involved in the interference below and containing claim 1), the claims were rejected for double patenting, reciting duplicates, and failing to define the invention with the definiteness required by 35 U.S.C. Sec. 112.
At this point, a new attorney was assigned to handle the Cebalo application and, after an interview with the examiner 41. Thiadiazoles having the structure:
claim 1 was cancelled. By an amendment of April 6, 1970, claim 41, setting forth a narrower group of compounds, all of which serve as starting materials for the compounds of the counts and in which the 5-position can only be substituted with a fluorinated alkyl group, was substituted for claim 1:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
and tautomers thereof:
wherein A is a C1 -C7 haloalkyl radical, wherein each halogen is independently selected from the group consisting of F, Cl, and Br; and B is selected from the group consisting of lower alkyl and lower alkenyl radicals.
The Canadian patent was, again, not cited to the PTO in the amendment of April 6, 1970, notwithstanding that some of the compounds of claim 41 differ by as little as one fluorine atom from compounds disclosed by the Canadian patent and that some of the latter are herbicidal analogs of some of the former. See In re Albrecht, 579 F.2d 92, 94, 198 USPQ 208, 209 (C.C.P.A.1978); In re Widmer, 353 F.2d 752, 757, 53 C.C.P.A. 762, 147 USPQ 518, 523 (1965). Prosecution of claim 41 on the merits ended when this interference was declared.
In response to Driscoll's motion to strike the Cebalo application for fraud and to deny Cebalo the benefit of his earlier-filed parent application, Cebalo...
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