Martin v. Johnson

• Decision Date: 27 January 1972
• Docket Number: Patent Appeal No. 8559.
• Citation: 454 F.2d 746,172 USPQ 391
• Parties: Henry MARTIN et al., Appellants, v. Rayner S. JOHNSON, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

172 USPQ 391, 454 F.2d 746 (1972)

Henry MARTIN et al., Appellants, v. Rayner S. JOHNSON, Appellee.

Patent Appeal No. 8559.

United States Court of Customs and Patent Appeals.

January 27, 1972.

Joseph G. Kolodny, Summit, N. J., Harry Goldsmith, Upper Montclair, N. J., attorneys of record, for appellants. John T. Miller, Washington, D. C., of counsel.

Herbert W. Larson, Lynn N. Fisher, Wilmington, Del., attorneys of record, for appellee. Gerald A. Hapka, Arlington, Va., of counsel.

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.

LANE, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of the invention of the sole count in issue to the party Johnson. We affirm the decision of the board.

The count is drawn to a herbicidal compound which is a substituted urea chemically named 3-(p-bromophenyl)-1-methoxy-1-methylurea and reads as follows:

1. The compound of the formula

The interference, between the Johnson application¹ and the Martin et al. (Martin) patent,² was provoked by Johnson, who copied a claim from the patent. Johnson's application is a continuation-in-part of Serial No. 301,981 ('981), filed August 14, 1963, which in turn was a continuation-in-part of Serial No. 64,254 ('254), filed October 24, 1960. The Martin patent matured from an application³ which was a continuation-in-part of an application⁴ filed May 1, 1962. In the 1962 application, Martin claimed the benefit of a Swiss application filed May 6, 1961, under the provisions of 35 U.S.C. § 119. No testimony was taken by either party during the interference. The board accorded the party Martin the May 6, 1961, date of the Swiss filing and the party Johnson the earlier October 24, 1960, date of his '254 filing.

The Johnson '981 and '254 applications each disclose a herbicidal composition comprising two herbicidally effective compounds, one of which is a methoxy phenyl urea compound. In each application, example 3 uses 3-(4-bromophenyl)-1-methoxy-1-methylurea, the compound of the count, as the herbicidally active substituted urea compound, in conjunction with another herbicidal compound. Neither application discloses how to make the count compound.

Appellants advance two major contentions. They first assert that Johnson is not entitled to the benefit of the filing dates of his parent applications on the ground that the invention disclosed and claimed therein is different from that disclosed and claimed in the interfering application. Appellants further urge that all three Johnson applications fail to disclose any method of making the count compound thereby failing to satisfy the how-to-make requirement of 35 U.S.C. § 112, first paragraph. The legal consequence of this failure is urged to be two-fold: the benefit of the prior application filing dates would not be available to Johnson, and Johnson has no right to make the count.

The Board of Patent Interferences found as matters of fact the following:

c. In 1960, prior to October 24, 1969, it was known in textbook organic chemistry that substituted phenyl isocyanates would add to amines to give substituted phenyl ureas. The compound of the count is a substituted phenyl urea. Further, in 1960 herbicidal substituted phenyl ureas were well known.

d. Prior to October 24, 1960, at least three patents; sic namely, U. S. patent 2,655,444 and German patents 1,028,986 and 1,062,059 respectively, all directed to herbicidal halo-substituted phenylureas, disclose processes for making same. * * * 1,062,059 teaches the herbicidal utility of a group of substituted phenyl urea compounds of the following formula:

wherein X could be bromine, n could be 1,R3 could be hydrogen and R1 and R2 could be methyl. When these substitutions are made, the compound of the count would be taught. Although the compound of the count is not specifically disclosed in 1,062,059, it is embraced by the generic formula therein. Three methods of making said substituted phenyl urea herbicides are taught, one of which is the reaction of a substituted phenyl isocyanate with an O,N dialkylhydroxylamine. As previously set forth, if the appropriate substitutions are made, this scheme covers the preparation of the compound of the count. Thus:

The operativeness of this method has not been challenged by Martin.

e. The necessary reactants for forming the compound of the count, i. e., p-bromophenyl isocyanate and O,N dimethylhydroxylamine were both old and known in the art prior to October 24, 1960.

6. On December 18, 1966, Henry J. Gerjovich, a graduate organic chemist, filed an affidavit on behalf of Johnson. In it, he stated that having the German patent 1,062,059 * * * in front of him and given the compound name, 3-(p-bromophenyl)-1-methyl-1-methoxy urea, (the compound of the count) it would be obvious that this compound could be prepared as taught by said patent.

7. Further, in said affidavit, Gerjovich stated that German patent 1,028,986 teaches the preparation of the compound 3-(p-chlorophenyl)-1-methyl-1-methoxyurea by reacting p-chlorophenyl isocyanate with O,N-dimethyl hydroxylamine in benzene.

Given the compound name, 3-(p-bromophenyl) - 1 - methyl-1-methoxyurea, Gerjovich continued, it would be obvious to him as one skilled in the chemical art that this para bromo-substituted compound could be prepared by the method of the German patent (1,028,986) by using p-bromophenyl isocyanate as a reactant instead of p-chlorophenyl isocyanate.

From these findings, the board concluded that:

5. With the knowledge of the prior art, * * * one skilled in the art would know how to make the compound of the count merely from knowing its name or structural formula * * * and undue experimentation would not be necessary for one skilled in the art to make the compound of the count.

6. With regard to reaction temperatures and times and solvents, in our opinion, the determination of these parameters, under the circumstances of the case before us, is within the purview of one skilled in the art who could readily determine same to produce the compound of the count with a minimum amount of experimentation.

7. Within the limits indicated in our opinion, supra, the Johnson disclosures, coupled with the prior art clearly satisfy the requirements of 35 U.S.C. § 112.

OPINION

I. "Adequate Chain of Copendency"

Appellants first urge that the '981 and '254 Johnson applications are directed to an invention different from that described in the Johnson application in interference and the subject matter of the count. It is contended that the earlier applications were drawn to a mixture of herbicidal compounds, and that both the effective amount of total herbicide and the effective amount of the substituted urea compound were greater than the effective amount of the substituted urea disclosed in the interfering application. Appellants seek to buttress their argument by pointing to the fact that the compound of the count was not claimed in either of Johnson's parent applications. Under the circumstances, appellants conclude that, "with respect to the invention in interference, there is no adequate chain of copendency."

A patent applicant is entitled to the benefit of the filing date of a previously filed application when the requirements of 35 U.S.C. § 120 are satisfied. In In re Brower, 433 F.2d 813, 58 CCPA 724 (1970), we deemed the appellants there to have been entitled to the filing date of a parent application even though the claims of the application on appeal were drawn to a process which utilized a certain additive by itself, whereas the specification of the parent application indicated as essential the use of that additive in combination with another. We construed the parent application as indicating that the subject matter regarded as the invention was the process employing the two materials, and that given the parent disclosure, a claim in that application drawn to the use of but one of them would run afoul of the second paragraph of § 112.⁵ The application on appeal reflected the intent of the inventors to consider as an embodiment of their invention the use of the one additive by itself and therefore supported a claim drawn to its sole use. Sec. 120, however, explicitly requires only that the claimed subject matter be "disclosed in the manner provided by the first paragraph of section 112," (emphasis added), and we accordingly reversed the decision of the Board of Appeals in that case denying the benefit of § 120 on our finding that the disclosure of the parent was sufficient in the first paragraph sense with respect to the claim on appeal.

From Brower, based on a factual situation obviously very similar to that at bar, it is evident that the salutary provision in the statute which confers the benefit of an earlier filing date is not dependent on that which may be gleaned from the claims or specification to be the subject matter regarded by the applicants as their invention in the earlier application. It turns on whether the disclosure requirements of the first paragraph of § 112 are met with respect to the subject matter now claimed. As applied to the previously filed Johnson applications, this...