Riester v. Kendall

• Decision Date: 10 February 1947
• Docket Number: Patent Appeal No. 5223.
• Citation: 159 F.2d 732,34 CCPA 859
• Parties: RIESTER v. KENDALL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

34 CCPA 859, 159 F.2d 732 (1947)

RIESTER v. KENDALL.

Patent Appeal No. 5223.

Court of Customs and Patent Appeals.

February 10, 1947.

Richard K. Stevens, of Washington, D. C. (E. P. Gilheany, of New York City, and E. H. Mosher, of Washington, D. C., of counsel), for appellant.

Lynn B. Morris, of Washingon, D. C., (C. H. Biesterfeld, of Washington, D. C., of counsel), for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

O'CONNELL, Associate Judge.

This is an appeal in an interference proceeding from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention of the subject matter defined by the counts in issue (Nos. 1 to 4, inclusive) to appellee Kendall.

The interference is between appellant's application, Serial No. 237,474, filed October 28, 1938, which has an alleged "German convention date" of November 8, 1937; and appellee's application, Serial No. 174,693, filed November 13, 1937, which has an alleged "British convention date" of November 14, 1936.

The interference when instituted involved the application, Serial No. 316,002, filed by a third party, Brooker, who conceded priority to appellee. Thereupon the proceeding was terminated as to that particular party.

No testimony was taken by either party. In lieu thereof, each party filed a certified copy of his foreign application and relies upon that application for constructive reduction to practice.

Appellant is the junior party and the burden was upon him to establish priority of invention by a preponderance of the evidence.

The counts call for a process of producing dyestuffs and the product obtained therefrom. The products are alleged to be useful "for the optical sensitizing of photographic silver halide emulsions." Counts 1 and 3 are illustrative —

"1. A process for the production of dyestuffs comprising treating with an alkyl salt a compound of the general formula

where X is the remainder of a heterocyclic system of the type used in cyanine dyes, R is alkyl, R1 is alkyl, and R2 is a member of the group consisting of alkyl, aryl, and aralkyl."

"3. A product of the general formula where X is the remainder of a heterocyclic system of the type used in cyanine dyes, R, R1 and R3 are alkyl, and R2 is a member of the group consisting of alkyl, aryl, and aralkyl."

The sole question for determination is whether appellee's British application discloses the process and the dyestuffs defined by the counts in issue.

The answer to that question depends upon whether the subject matter of the counts is sufficiently disclosed in appellee's British application in view of the concededly initial error in that application in the recital of the structural formulæ for the dyes obtained as a result of carrying out the process therein defined.

In its decision the board made the following statement:

"In many chemical processes, formulæ and equations cannot be given at all with certainty due to the complexity of the reaction or incomplete knowledge thereof.

"This fact, however, does not preclude a proper disclosure of a chemical reaction and product. By the same token, an initial error in attempting to explain a reaction should not vitiate a disclosure which does in fact fully teach how to secure and recognize a certain product."

In awarding priority of invention to appellee, the board held that appellee's failure to give the correct structural formulae for the products disclosed by his British application was not controlling since products corresponding to the structural formulae of the counts are formed as a matter of fact in carrying out the steps of the process disclosed by the three working examples of the British application, irrespective of the structural formulae given therein.

The board also held that appellee's British application disclosed not only the complete process for preparing the dye-stuffs but also the dyestuffs themselves and the means for identifying them that are called for by the counts, although "the counts designate this dyestuff and process in a language that was not fully understood by Kendall at the time he filed his provisional specification."

The board stated that that portion of the disclosure in the Kendall British provisional application which gave the formulae and equations was "* * * a gratuitous contribution that was not absolutely essential to a teaching of the invention. The further fact that it was couched in terms of uncertainty was reasonable notice to those skilled in the art that subsequent knowledge might necessitate altering the...