Fried v. Murray
| Decision Date | 30 June 1959 |
| Docket Number | No. 6398.,6398. |
| Citation | 268 F.2d 223 |
| Parties | Josef FRIED, David Perlman, Richard W. Thoma, and Elwood O. Titus, Appellants, v. Herbert C. MURRAY, and Durey H. Peterson, Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Bryant W. Brennan, New Brunswick, N. J. (Robert Alpher, New York City, of counsel), for appellants.
Charles M. Thomas and M. M. Weisman, Washington, D. C. (George T. Johannesen and Gordon W. Hueschen, Kalamazoo, Mich., of counsel), for appellees.
Before WORLEY, Chief Judge, and RICH, MARTIN, and JOHNSON (retired), Judges.
This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office, awarding priority to the junior party, Murray et al., for an invention relating to a process for introducing oxygen into a steroid nucleus. Appellants, Fried et al., are involved in this interference on their application S.N. 296,256 filed June 28, 1952, and appellees, Murray et al., are involved on their Patent No. 2,649,402 issued August 18, 1953, on an application filed August 23, 1952.
Murray et al. offered no evidence but instead rely upon the disclosure of their prior filed application S.N. 272,944, filed February 23, 1952 (issued as Patent No. 2,602,769), to support the contested counts of interference. Since the record herein shows that Patent No. — 769 (2,602,769) was issued on July 8, 1952, and that the application on which Patent No. 2,649,402 was granted was not filed until August 23, 1952, we remanded the cause to the Board of Patent Interferences for clarification of its basis for finding copendency. The board thereupon rendered a Supplemental Decision, finding continuity of disclosure of the subject matter of the contested counts on the basis of the disclosure of a bridging application, S.N. 297,242 filed July 5, 1952 (now Patent No. 2,735,800), which bridging application was held to contain "* * * the same two pertinent paragraphs which appear in Patent No. — 769 * * *," and which paragraphs are here relied upon to support the counts in issue. Appellant has not contended that there is any material distinction, insofar as the disclosure of the invention in issue is concerned, between the bridging application and application S.N. 272,944, and since the bridging application has not been made a part of the record before us, we must accept the board's statements pertaining thereto. Cf. Ericson v. Shaff, 104 F.2d 626, 26 CCPA 1350, 1355.
Of the twenty-two counts of interference, the following are deemed illustrative:
Murray et al. rely upon the following paragraph, found in Patent No. — 769, to support the contested counts:
"Other microorganisms which have been found useful in the oxygenation of steroids, including eleven desoxy steroids, although not necessarily producing the same result as the fungi of the murcorales order, include various strains of Penicillium, e. g., P-100, Aspergilli, e. g., Aspergillus niger, * * *." Emphasis ours.
In addition, it is contended that the necessary modes of fermentation of Aspergilli, as well as of various genera in the order Mucorales, are disclosed in Kane et al. Patent No. 2,327,191, incorporated by reference in Murray et al. Patent No. — 769 by the following provision:
"* * * The addition of steroid in the concentration and at the times as mentioned above, to the media and under the conditions utilized for the production of fumaric acid, as in * * * Kane et al. 2,327,191 * * * achieves the production of oxygenated steroids * * *." Emphasis ours.
The board held that the above "* * * two pertinent paragraphs * * *" were sufficient, either alone or in view of the teachings of the Kane et al. patent, to support the process of the instant counts in its suggestion of oxygenating eleven desoxy steroids by means of fungi of the genus Aspergillus, and more particularly with the species Aspergillus niger.
Appellant contends that the first quoted statement from the Murray et al. patent is ambiguous and speculative, in view of the provisions contained therein that the other microorganisms there mentioned, including the Aspergilli, "have been found useful * * * although not necessarily producing the same result as the fungi of the Mucorales order * * *." It is further urged that such disclosure fails to teach which Aspergilli will function to introduce oxygen into the eleven position of the eleven desoxy steroid molecules recited.
Additionally, appellant claims that the teachings of the associated Kane et al. patent, relied on by the board to show the necessary conditions for fermentation of Aspergilli, are of no assistance to the party Murray et al. since they fail to suggest any particular species of Aspergillus which would function to facilitate steroid oxygenation. Rather, it is argued that the Kane patent shows only the production of fumaric acid by a fermentation process employing selected species of Aspergillus, and, therefore, the associated teachings of that patent serve only "to compound prophecy by speculation."
The sole issue for determination is whether or not Murray et al. Patent No. — 769 (application S.N. 272,944) adequately supports the counts in issue so as to constitute a constructive reduction to practice of the invention defined therein. In other words, is there sufficient disclosure in this patent, together with...
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