Feldman v. Aunstrup

• Decision Date: 18 September 1975
• Docket Number: Patent Appeal No. 74-602.
• Citation: 517 F.2d 1351
• Parties: Louis I. FELDMAN, Appellant, v. Knud AUNSTRUP, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

517 F.2d 1351

Louis I. FELDMAN, Appellant, v. Knud AUNSTRUP, Appellee.

Patent Appeal No. 74-602.

United States Court of Customs and Patent Appeals.

June 19, 1975.

Rehearing Denied September 18, 1975.

Richard R. Trexler, Chicago, Ill. (Olson, Trexler, Wolters, Bushnell & Fosse, Ltd., Chicago, Ill.), attorney of record, for appellant.

Morris Fidelman, James S. Waldron, Washington, D.C. (Fidelman, Wolffe, Leitner & Hiney, Washington, D.C.), attorneys of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

LANE, Judge.

This appeal by Feldman (junior party) is from the decision of the Patent and Trademark Office (PTO) Board of Patent Interferences awarding priority of invention to Aunstrup (senior party). The issues centers around Aunstrup's specification, which refers to a microorganism culture deposited in a foreign country, and the requirements of 35 U.S.C. § 112, first paragraph. Hence, this case is a sequel to In re Argoudelis, 434 F.2d 1390, 58 C.C.P.A. 769 (1970). The board held that Aunstrup's specification satisfies § 112, first paragraph, and we affirm.

The Subject Matter

The sole count reads:

A process for the preparation of a milk-coagulating enzyme which comprises cultivating a milk-coagulating enzyme producing strain of Mucor miehei Cooney et Emerson or a natural or artificial variant or mutant thereof in a suitable nutrient medium, and thereafter recovering the milk-coagulating enzyme from the medium.

The count is identical to claim 9 of the involved Aunstrup application¹ and corresponds substantially to claim 1 of the involved Feldman application.²

The microorganism, Mucor miehei, is said to be a species of fungus within the genus Mucor in the family of Mucoraceae in the order Mucorales. The inventive process is based on the discovery that Mucor miehei produces a milk-coagulating enzyme (rennin) which is useful in cheese making.

As in Argoudelis, supra, the microorganism is an essential starting material in the process, it is not of common occurrence, and an experimental screening program trying to find the microorganism in nature again might take a very long time. Hence, the parties agree that reference to a deposit of this microorganism is necessary for a sufficient disclosure under 35 U.S.C. § 112, first paragraph.

The applications of both parties contain such references. Feldman's application refers to several cultures of Mucor miehei (by code number) deposited at the Northern Regional Research Laboratory (U. S. Department of Agriculture) in Peoria, Illinois. Aunstrup's application refers to a single culture of Mucor miehei (by code number) deposited at Centraalbureau voor Schimmelcultures (which translates as Central Bureau for Mould Cultures) in Baarn, Netherlands (hereafter called CBS). Aunstrup's application also gives a detailed morphological description of the microorganism.

Chronology

The chronology of the pertinent events can be summarized as follows:

                Party                        Party
                Aunstrup                     Feldman
                Restricted deposit
                in CBS Nov. 18, 1965
                British Provisional
                Specification 51270/65
                Dec. 2, 1965
                U.S. Ser. No. 595,643
                Nov. 21, 1966
                                             U.S. Ser. No. 631, 608
                                             April 18, 1967
                                             U.S. Ser. No. 688,349
                                             Dec. 6, 1967
                Deposit made unrestricted
                March 20, 1969
                                  Interference declared July 6, 1971
                

Facts Surrounding Aunstrup's Deposit

According to Aunstrup's application and his testimony, his specimen of Mucor miehei was isolated from a compost pile in his garden in Copenhagen, Denmark, in September 1965. Aunstrup's employer (and assignee) thereafter wrote to CBS with the result that on November 18, 1965 a specimen was deposited with CBS in its collection of "restricted cultures" and given the code number CBS 370.65.

Dr. Gerardus Albertus De Vries, testifying as an official of CBS, stated that CBS was founded in 1904 by the International Organization of Botanists, that in 1965 CBS was a private foundation which derived financial support from the Dutch government, and that later, in 1968, CBS became part of the Royal Netherlands Academy of Sciences and Arts, which is a governmental organization. Dr. De Vries also testified in detail on the high standards and careful means of preservation employed at CBS to assure permanent viability of the cultures. Dr. Clifford W. Hesseltine,³ Chief of the Fermentation Laboratory at the Northern Regional Research Laboratory, testified in a private, professional capacity and stated that: "We've had exchanges with C.B.S., and we believe it is a very reliable culture collection."

With respect to a "restricted culture" deposit at CBS, such as CBS 370.65 in 1965, Dr. De Vries stated that such cultures are maintained as a part of the permanent collection, but are made available to third parties only after written consent is given to CBS by the depositor.

Aunstrup further testified that the restrictions on CBS 370.65 were removed on March 20, 1969, by a letter in evidence from Aunstrup's assignee to CBS. Dr. De Vries testified that the official business records of CBS in evidence establish that CBS 370.65 has been unrestricted and "open to the public" since that date. Feldman does not contest this fact.

The Board

Before the board, there were three issues: (1) whether Aunstrup's British Provisional Specification (relied on under 35 U.S.C. § 119) and his corresponding U. S. application (involved herein) satisfied the requirements of 35 U.S.C. § 112, first paragraph; (2) whether Feldman had abandoned the invention; and (3) whether Feldman's priority proofs established an actual reduction to practice.

The board decided issue (1) in the affirmative and issues (2) and (3) in the negative.

The Issue

Feldman has appealed only on issue (1). The parties agree that there is no difference in disclosure between Aunstrup's British Provisional Specification and the involved U. S. application. Therefore, the issue narrows to whether Aunstrup's U. S. application satisfies the requirements of § 112, first paragraph. If it does, then Aunstrup is admittedly entitled to the benefit of the filing date of his U. S. application as a "constructive reduction to practice."

Appellant's Contentions

Feldman's first contention is that "there must be assured availability of the microorganism deposit to the United States Patent Office as of the filing date" of the U. S. application and to the public "upon issuance of the patent" in order to satisfy § 112, first paragraph, and that this was lacking in Aunstrup's CBS 370.65 deposit.

Feldman's second contention is that "a private depository, recognized and reputable though it may be, which is not an agency of the United States Government, or any government, and which is located in a foreign country, not subject to United States law, can not be an acceptable depository for a United States patent."

In support, Feldman argues that "essentially none of the considerations * * * in Argoudelis is present," and that the board erred in concluding that the "conditions" of the Commissioner's Notice of April 29, 1971, 886 O.G. 638 (now MPEP 608.01(p)), may be "retroactively satisfied." The Commissioner's Notice provides:

Deposit of Microorganisms

Some inventions which are the subject of patent applications depend on the use of microorganisms which must be described in the specification in accordance with 35 U.S.C. 112. No problem exists when the microorganisms used are known and readily available to the public. When the invention depends on the use of a microorganism which is not so known and readily available, applicants must take additional steps to comply with the requirements of Section 112.

In re Argoudelis et al. 434 F.2d 1390, 58 CCPA 769, 168 USPQ 99 (CCPA, 1970), accepted a procedure for meeting the requirements of 35 U.S.C. 112. Accordingly, the Patent Office will accept the following as complying with the requirements of Section 112 for an adequate disclosure of the microorganism required to carry out the invention:

(1) The applicant, no later than the effective U.S. filing date of the application, has made a deposit of a culture of the microorganism in a depository affording permanence of the deposit and ready accessibility thereto by the public if a patent is granted, under conditions which assure (a) that access to the culture will be available during pendency of the patent application to one determined by the Commissioner to be entitled thereto under Rule 14 of the Rules of Practice in Patent Cases and 35 U.S.C. 122, and (b) that all restrictions on the availability to the public of the culture so deposited will irrevocably removed upon the granting of the patent;

(2) Such deposit is referred to in the body of the specification as filed and is identified by deposit number, name and address of the depository, and the taxonomic description to the extent available is included in the specification; and

(3) The applicant or his assigns has provided assurance of permanent availability of the culture to the public through a depository meeting the requirements of (1). Such assurance may be in the form of an averment under oath or by declaration by the applicant to this effect.

A copy of the applicant's contract with the depository may be required by the Examiner to be made of record as evidence of making the culture available under the conditions stated above. Emphasis ours.

OPINION

Assured Public Access to the Microorganism Culture

Feldman's first contention relates to the microorganism deposit at CBS as of the 1966 filing date of Aunstrup's U. S. application and the contention is in two parts: (1) "assured availability" to the PTO during pendency of Aunstrup's U. S. application, and (2) "assured availability" to the public upon issuance of Aunstrup's application as a U. S. patent.

In regard to part (1), we see no merit. Under the...