Oka v. Youssefyeh

• Decision Date: 29 January 1988
• Docket Number: No. 87-1501,87-1501
• Citation: 7 USPQ2d 1169,849 F.2d 581
• Parties: OKA et al., Appellants, v. YOUSSEFYEH et al., Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 581

849 F.2d 581

7 U.S.P.Q.2d 1169

OKA et al., Appellants, v. YOUSSEFYEH et al., Appellees.

Appeal No. 87-1501.

United States Court of Appeals, Federal Circuit.

Jan. 29, 1988.

Published Opinion Issued June 15, 1988.

Barry E. Bretschneider, Wegner & Bretschneider, Washington, D.C., argued, for appellants. With him on the brief, were Harold C. Wegner and Helmuth A. Wegner.

Stephen D. Murphy, Scully, Scott, Murphy & Presser, of Garden City, N.Y., argued, for appellees. With him on the brief, was Frank S. Digiglio.

Before MARKEY, Chief Judge, RICH, Circuit Judge, and MILLER, Senior Circuit Judge.

MARKEY, Chief Judge.

The Patent and Trademark Office Board of Patent Appeals and Interferences (board), in Interference No. 101,111, awarded priority of invention to junior party Youssefyeh et al. over senior party Oka et al., who relied on their October 31, 1980 Japanese filing date under 35 U.S.C. Sec. 119. We reverse.

Background

The sole generic count in the interference is directed to compounds possessing angiotensin converting enzyme inhibition activity, and is set forth as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

wherein:

R and R9 are independently hydroxy or lower alkoxy R1 is hydrogen, lower alkyl or aryl lower alkyl;

R2 , R3 , R4 , R5 , R7 and R8 are hydrogen or lower alkyl;

R6 is indanyl;

and their pharmaceutically acceptable salts.

The compounds can be described as optionally esterified carboxyalkyl substituted dipeptides that contain two amino acid groups, one of which, typically a glycine, bears a group R6 , defined as an "indanyl group". The indanyl glycine of the count may be a Cycloaliphatically-bonded Indanyl, typically a 2-indanyl group, or an Aromatically-bonded Indanyl, typically a 5-indanyl group.

On February 27, 1980, one of Youssefyeh's co-inventors, Suh, recorded in his notebook this structural formula, encompassing billions of compounds within the class of 2-Indanyl Glycines:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

OPINION

Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it. Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985); Alpert v. Slatin, 305 F.2d 891, 894, 134 USPQ 296, 299 (CCPA 1962); see Standard Oil Co. v. Montedison, 494 F.Supp. 370, 407, 206 USPQ 676, 711-12 (D.Del.1980), aff'd, 664 F.2d 356, 212 USPQ 327 (3d Cir.1981). Youssefyeh quotes from Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1929):

Conception may conveniently be considered as consisting of two parts. The first part is "the directing conception" and may be defined as the idea or conception that a certain desired result may be obtained by following a particular general plan. The directing conception is often referred to as the inventive concept, thought or idea. The second part of conception is "the selection of the means for effectively carrying out the directing conception."

When, as is often the case, a method of making a compound with conventional techniques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised. In the present case, the board itself recognized that conception required both a description, i.e., the idea, of a compound and possession of a method for making it. In denying Youssefyeh's claim of February 27, 1980, as its conception date, the board said:

It is Youssefyeh's position that conception occurred on February 27, 1980, * * * because the inventors believed on that date that the compounds could be prepared in accordance with conventional techniques. However, Bernstein, a skilled Ph.D. chemist, spent over six months and was not successful in preparing the 2-indanyl compounds within the scope of the count, a circumstance which indicates that the inventors did not contemplate an operative invention, e.g., an operative method for making the compounds as of February 27, 1980.

The board made these not clearly erroneous findings: (1) because Youssefyeh had only the idea of a 2-indanyl class of compounds on February 27, 1980, it did not establish conception on that date; (2) Youssefyeh was in possession of a method of making a compound outside the scope of the interference count on October 10, 1980; (3) during the last week of October 1980, co-applicant Suh directed his assistant to use the October 10, 1980 method to prepare a species of a 5-indanyl class of compounds within the scope of the interference count; (4) the assistant successfully did so in December 1980; (5) Youssefyeh reduced the invention to practice on January 9, 1981. ¹ Based on findings (2), (3), and (4), the board found that "an operative procedure was realized for preparing the 5-indanyl compound" as of October 10, 1980. That finding was clearly erroneous.

The board correctly noted that conception of a species within a genus may constitute conception of the genus. Miller v. Walker, 214 USPQ 845, 847 (Bd.Pat.Int.1982); see Mikus v. Wachtel, 504 F.2d 1150, 1151, 183 USPQ 752, 753 (CCPA 1974) (reduction to practice of species established priority to genus). However, as Youssefyeh acknowledges, 2-indanyl compounds and 5-indanyl compounds are different species within the generic interference count. Youssefyeh did not conceive of the 2-indanyl compound as an operative invention on February 27, 1980 because it lacked at that time ...