Massachusetts Institute of Technology v. Ladd

• Decision Date: 09 July 1964
• Docket Number: Civ. A. No. 3392-62.
• Citation: 231 F. Supp. 146
• Parties: MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

231 F. Supp. 146

MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.

Civ. A. No. 3392-62.

United States District Court District of Columbia.

July 9, 1964.

Harold T. Stowell, Washington, D. C., Roger T. McLean, N. Dale Sayre, McLean & Boustead, New York City, for plaintiff.

Joseph Schimmel, Washington, D. C., for defendant.

JACKSON, District Judge.

This civil action was brought pursuant to 35 U.S.C. § 145 seeking judgment of this Court authorizing the defendant, Commissioner of Patents, to issue Letters Patent of the United States on an application Serial No. 810,231 entitled "Production of Penicillins", filed May 1, 1959,¹ by John C. Sheehan and assigned to the plaintiff.²

The invention described in the application relates to a method for producing penicillins by chemical synthesis. The method consists of the single step of subjecting 6-aminopenicillanic acid (hereinafter referred to as 6-APA) to the action of an organic acid acylating agent. The reaction process is adequately described by the language of claim 1, which reads as follows:

"1. A method of making acylaminopenicillanic acids of the formula

wherein R is an organic acid radical which comprises subjecting aminopenicillanic acid of the formula

to the action of an organic acid acylating agent."

Six additional claims were presented for adjudication, each of them setting forth with more particularity the character of the acid radical R, and also the character of organic acid acylating agent.

The Examiner rejected all the claims (1 through 7) as obvious in view of the disclosures of two printed publications, an article in 1953 by Kato,³ and a "Letter to the Editors" in 1949 by Hockenhull et al.⁴ The claims were also rejected for failing to conform to the requirement of 35 U.S.C. § 112 that they particularly point out and distinctly claim the subject matter which the plaintiff regards as its invention.

The Patent Office Board of Appeals unqualifiedly affirmed the Examiner's rejection of the claims on the ground of obviousness, but reversed the Examiner as to the rejection under 35 U.S.C. § 112 insofar as the terms "a phenoxy-lower-alkanoic acid acylating agent", "a phenoxy-lower-alkanoyl halid", and "comprises subjecting" were held by the Examiner not to comply with that section's provisions.

Before the Court, the Solicitor followed the position of the Board and the Examiner on the issue of obviousness, but conceded that additional evidence introduced by the plaintiff overcame the rejection under 35 U.S.C. § 112, at least insofar as broadness of the claims was concerned.

Since the Patent Office rejection is predicated upon the language of 35 U.S. C. § 103, the issue here to be determined is the extent to which the plaintiff's process "would have been obvious at the time the invention was made to a person having ordinary skill in the art * * *." More particularly, the crux of the matter is whether the references cited by the Patent Office contain subject matter which would have led a skilled chemist in March 1957 to have conceived of the process of synthesizing penicillin in the manner which the plaintiff has disclosed.

Since most of the argumentation before the Court has been devoted to interpreting the nature of the subject matter the references contain, it will be necessary for the Court to examine them in some detail.

The Kato article relates to biological experiments in penicillin production and postulates the occurrence in fermentation broths of a substance termed "penicillin-nucleus". It states that this substance occurs in the absence in the broth of any precursor (e. g. phenylacetic acid) for the R group of the penicillin molecule, and that the addition of phenylacetic acid to the broth suppresses occurrence of the substance and results in increased production of penicillin, "indicating a direct interconversion of them ("penicillin nucleus" and phenylacetic acid) within the mold cells". The Examiner, and presumably the Board and the Solicitor, contended that "penicillin-nucleus" is analogous to, if not the same as "6-APA", and that the addition of phenylacetic acid is analogous to, if not the same as, the step of plaintiff's claims which prescribe "subjecting aminopenicillanic acid * * * to the action of an organic acylating agent."

The Hockenhull publication is a conjecture on the possible precursors of penicillin in its biosynthesis. It states that unpublished experiments by one of the authors indicate that an acylation process by carboxylic acid takes place after the synthesis of a "dicyclic portion" of penicillin "associated with the cell-substance of the mold". As the Patent Office pointed out, Hockenhull sets forth a formula for natural penicillin showing the presence of an acylated amino group. This formula is the same as that of the penicillin produced by the plaintiff according to claim 1. Additionally, Hockenhull posulates that "experiments * * indicate that the acylation process * * takes place after the synthesis of the dicyclic portion, which latter appears to be associated with the cell substance of the mold." The Patent Office interprets this reference to show an acylating process analogous to, if not the same as, the "action of an organic acylating agent" of plaintiff's claim 1, and interprets the "dicyclic structure" to be analogous to, if not the same as, the "6-APA" of plaintiff's claim 1.

After meticulously examining the evidence bearing on the chemical significance of these two publications, it is the opinion of the Court that the Patent Office has erred in interpreting their meaning.

First, both references are wholly devoted to conjecture as to the manner in which penicillin is produced biologically by living organisms. The articles do not pretend to be more than observations of the natural processes carried out by mold cells. They are each predicated upon study of mold behaviour. The essence of plaintiff's invention, however, is that penicillin can be...