Renz v. Jacob

• Decision Date: 23 January 1964
• Docket Number: Patent Appeal No. 7074.
• Citation: 326 F.2d 792
• Parties: Jany RENZ, Jean Pierre Bourquin, Guido Gamboni and Gustav Schwarb, Appellants, v. Robert Michel JACOB and Gilbert Louis Regnier, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

326 F.2d 792 (1964)

Jany RENZ, Jean Pierre Bourquin, Guido Gamboni and Gustav Schwarb, Appellants, v. Robert Michel JACOB and Gilbert Louis Regnier, Appellees.

Patent Appeal No. 7074.

United States Court of Customs and Patent Appeals.

January 23, 1964.

James W. Dent, Washington, D. C., and Albert L. Jacobs, New York City, for appellants.

Ellsworth H. Mosher, Washington, D. C. (Stevens, Davis, Miller & Mosher, Washington, D. C., of counsel), for appellees.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

MARTIN, Judge.

This appeal is from the decision of the Board of Patent Interferences which awarded priority of invention to senior party Jacob et al. in Interference No. 89,320. That interference involves an application serial No. 622,740 filed November 19, 1956 by the senior party Jacob et al. and applications serial No. 653,058 and serial No. 653,077, both filed April 16, 1957 by junior party Renz et al.

The interference involves two counts which read:

1. A compound of the formula:

2. A compound having the formula:

The compound of count 2, 3-methylthi-ophenothiazine, is used in the preparation of the compound of count 1, 3-methylthio-10-(3-dimethyl-aminopropyl) phenothiazine.

Both parties to the interference rely solely for their respective dates of invention on earlier corresponding foreign applications. Pertinent dates are tabulated as follows:

                  Senior party Appellees           Junior party Appellants
                            (Jacob et al.)                   (Renz et al.)
                  -------------------------------------------------------------
                  French application No. 703,310
                  November 25, 1955
                  -------------------------------------------------------------
                                                   Swiss Application No. 32,283
                                                   April 18, 1956
                                                   Swiss Application No. 32,347
                                                   April 19, 1956
                  -------------------------------------------------------------
                  U. S. Application serial No
                    622,740
                  November 19, 1956
                  -------------------------------------------------------------
                                                   (Count 1)
                                                   U. S. Application serial No
                                                     653,058
                                                   April 16, 1957
                                                   (Count 2)
                                                   U. S. Application serial No
                                                     653,077
                                                   April 16, 1957
                  -------------------------------------------------------------
                

The motion period in the interference was initially set to expire on December 1, 1958. By a series of stipulations that date was extended to May 4, 1959. Appellants on May 4, 1959 filed their only timely motion. That motion was based solely on the ground that appellees had no right to make count 2 because the "subject matter of said count is directed to an invention which is different from that of the other and constructively elected (final product) claims of the Jacob et al application."

The primary examiner denied appellants' motion to dissolve stating, "The compound of count 2 is fully supported in the Jacob et al application. The fact that there is a non-elected invention involved in the interference does not make the interference improper," and that "it is within the discretion of the Patent Office to declare the interference when the party disclosing but not claiming the invention is senior and the junior application is ready for issue." On reconsideration the primary examiner adhered to his decision denying appellants' motion.

On June 7, 1961, appellants filed their brief on final hearing before the Board of Patent Interferences urging that appellees are not entitled to a date prior to appellant's dates of April 18 and 19, 1956 since appellees' French application No. 703,310 is fatally defective. The said French application was said to be fatally defective because:

"(i) the disclosure as to the method of preparation of the compound of count 2 is wholly insufficient as to precise details;

"(ii) such disclosure involves a starting compound which was unknown at the date of the French application; and

"(iii) such deficiency renders the disclosure as to the final compounds (count 1) likewise wholly insufficient."

Further, it was urged that since no claim to the compound of count 2 had been asserted by appellees within one year "from the date of their filing in France, priority rights for such count are not available to them." Appellants urge that "it is impossible for a claim corresponding to count 2 to be allowed in the Jacob et al. application" since appellees did not regard the intermediate as their own invention, at least as of their U. S. filing date of November 19, 1956. This appellants urge, is illustrated by the facts that appellees "did not claim the said intermediate at all — although two complete sets of claims were asserted — until invited so to do by the Examiner," and that appellees "did not deem it necessary to comply with the applicable U. S. patent practice which requires an applicant to disclose the best mode contemplated by them of carrying out this aspect of the matter."

On June 16, 1961 appellees filed a motion to strike appellant's brief filed June 7, 1961 on the ground that it was directed to issues not raised by motion before the primary examiner. The board summarized the new issues as follows:

"(a) The French application Serial No. 703,310 of November 25, 1955 upon which the party Jacob et al. relies for priority is fatally defective as a constructive reduction to practice of Count 2;

"(b) The aforementioned French application is fatally defective with respect to Count 2 because the starting material recited in the last paragraph of Example I was not known at the date of the filing of said application;

"(c) The French application referred to above is fatally defective with respect to Count 2 because there is no detailed disclosure of "cyclisation with sulphur";

"(d) The disclosure of the French application is fatally defective with respect to Count 2 because there is no detailed disclosure of "decarboxylation";

"(e) The U. S. application of Jacob et al. should not be entitled to the benefit of the filing date of the aforementioned French application because the claim was asserted in the U. S. application of Jacob et al. more than a year after the filing date of the aforementioned French application; and

"(f) The party Jacob et al. is not entitled to claim the subject matter of Count 2 because the U. S. application did not disclose the best method of carrying out the invention."

On June 23, 1961 appellants filed an opposition thereto and consideration of these papers was deferred to the final hearing.

Final hearing for the interference before the board was on July 17, 1961.

On July 18, 1961, appellants filed a memorandum re proceedings at final hearing, accompanied by two affidavits. In response thereto appellees on July 24, 1961 filed a request that consideration of appellees' motion to strike filed July 16, 1961 be extended to appellants' reply brief and the papers filed by appellants on July 18, 1961. This request was granted by the patent interference examiner in an order of July 28, 1961.

The board, in its decision of January 30, 1962, first referring to appellants' motion to dissolve on the ground that appellees have no right to make count (2) because it was drawn to a non-elected invention, stated:

"* * * the interference involves two counts; by memorandum submitted by Renz et al. appellants on February 23, 1960 * * *, it was ultimately indicated that the Renz et al. motion to dissolve was actually directed to the subject matter of count 2 and this is the manner in which the examiner treated same in his decision on motions denying the Renz et al. motion to dissolve. It is significant that prior to the filing of the brief for Renz et al. on final hearing, Renz et al. have never contended that the involved Jacob application lacks support therein for count 2. The issue raised by the Renz et al. motion to dissolve, supra, which was treated and denied by the examiner * * * involves a mere matter of procedure alone which does not prejudice the rights of Renz et al. The informality complained of is not such as will preclude a proper determination of the question of priority, as is required by Rule 232(a) (I). Hoefer et al. v. Barnes, 1904 C.D. 19, 108 O.G. 560; Atherton v. Cheney, 1904 CD 294; Ex parte Priebe, 1915 CD 39, 221 O.G. 351, cited by Jacob et al. Therefore, since the issue is an ex parte matter and concerns only the Office, it cannot be considered by us in this proceeding."

With regard to issues (a) through (e), supra, the board denied appellees' motion to strike on the ground that the disclosure of the French application¹ must be considered to determine whether or not the French application may properly constitute a constructive reduction to practice.

With regard to point (f), the board stated:

"* * * we will grant the motion to strike to the extent that we will not consider the question of Jacob et al\'s. right to make count 2 in the involved application of Jacob et al. for the reason that this question was not raised before the Primary Examiner by motion filed under Rule 232. See Rule 258(a) of the Rules of Practice, Land v. Dreyer 33 CCPA 1108, 590 O.G. 6, 155 F.2d 383, 69 USPQ 602 and Anderson v. Walch, 33 CCPA 774, 584 O.G. 167, 152 F.2d 975, 68 USPQ 215.²

In determining whether appellees can rely on their French application filed November 25, 1955 for a constructive reduction to practice, the board held that appellants cannot prevail as to the matter raised in issue (e). It stated:

"* * * as stated in Von Recklinghausen v. Dempster 34 App.D.C. 474; 1910 C.D. 365; 154 O.G. 252:

"`* * * It is settled law that claims may be introduced into an application by amendment, and if their subject matter is

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