Shell Development Company v. Watson

• Decision Date: 15 February 1957
• Docket Number: Civ. A. No. 2224-54.
• Citation: 149 F. Supp. 279
• Parties: SHELL DEVELOPMENT COMPANY, Plaintiff, v. Robert C. WATSON, Commissioner of Patents.
• Court: U.S. District Court — District of Columbia

149 F. Supp. 279

SHELL DEVELOPMENT COMPANY, Plaintiff, v. Robert C. WATSON, Commissioner of Patents.

Civ. A. No. 2224-54.

United States District Court District of Columbia.

February 15, 1957.

Edward B. Beale, Washington, D. C., for plaintiff, James M. Parker and Gary, Desmond & Parker, Chicago, Ill., Eugene O. Retter and Beale & Jones, Washington, D. C., of counsel.

Clarence W. Moore, Solicitor, Patent Office, Washington, D. C., for defendant, Joseph Schimmel, Washington, D. C., of counsel.

CURRAN, District Judge.

This is a civil action brought under the provisions of Section 145 of Title 35 of the United States Code, in which the plaintiff, Shell Development Company, a corporation as assignee of the patent application of Julius Hyman, Ernest Freireich and Rex E. Lidov, Serial No. 45,574, filed August 21, 1948, entitled "Dienic Hydrocarbons and Derivatives Thereof", seeks a judgment from the Court authorizing the defendant, Commissioner of Patents, to grant plaintiff letters patent of the United States, based upon claim 13 of the patent application.

The claim is as follows:

"As a new composition of matter, the hydrocarbon bicyclo — (2.2.1)-2, 5-heptadiene possessing the following structural formula".

The subject matter of this claim falls within a statutory class of "composition of matter." This phrase covers all compositions of two or more substances and includes all composite articles, whether they be results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids. See Walker on Patents, vol. 1, p. 55, par. 14. The subject matter of claim 13 is an organic compound generally known and denominated a hydrocarbon. According to the system of nomenclature, adopted at a meeting of the International Chemical Congress at Geneva in 1892, its name is "bicyclo-(2,2,1)-2, 5-heptadiene." The claim defines the compound by name and structural formula.

The Patent Office rejected the claim on the following grounds: (1) anticipation under Section 102(a) of Title 35 U.S.C. by the description in the Patterson et al. Monograph, that is, the Ring Index publication; and (2) non-patentability under Section 103 of Title 35 U.S.C., because the subject matter of the claim at issue would have been obvious to one skilled in the art given the teachings of the Alder et al. patent, and the Norton et al. and Joshel et al. publications.

The Ring Index publication is a monograph by Patterson and Capell published in 1940. On page 110 of the publication is an entry No. 668, relating to a compound having the common name "norcamphane", and a name under the Geneva nomenclature of "bicyclo (2,2,1)-hep-tane." The structural formula of that compound is illustrated in the margin beside the descriptive matter, as follows:

Entry No. 668 contains other names according to the Geneva nomenclature, and one of these is "bicyclo (2,2,1)-2, 5-heptadiene." This is the name of the compound defined in claim 13 here.

On the last line of Item 668 of the Index there appears the notation Ann. 490, 238-9 (1931). Dr. Leonard T. Capell, plaintiff's expert, testified that this notation "is an original reference referring to the German periodical Analen, Volume 490, and the pages given are the exact pages on which a compound which includes this didehydro form occurs." The structure indicated is the same as plaintiff's exhibit number 7, and is as follows:

Plaintiff's exhibit number 6, shown below, is plaintiff's claimed structure, with the carbon being shown, and counsel for the plaintiff concedes that it is immaterial that the carbon was not shown in the claim because the carbon is inherent in the fact that there is a ring.

Dr. Capell testified that plaintiff's exhibit number 6 was a derivative of plaintiff's exhibit number 7. According to Webster's New International Dictionary, 2nd Ed.1948, derivative in chemistry is defined as a "substance so related to another substance by modification or partial substitution as to be regarded as theoretically derived therefrom, even when not obtainable from it in practice * * *"

Would one skilled in the art seeing the index entry, which includes plaintiff's exhibit number 7 and the name bicyclo (2,2,1)-2, 5-heptadiene comprehend...