Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
TAKAYA ET AL.
Patent Interference No. 101,497
February 10, 1988
Final Hearing January 13, 1988
2-(2-Amino-4-Thiazolyl)-2-Methoxyimino-Acetic Acid Derivatives
Patent granted to Rene Heymes on May 31, 1983, Patent No. 4,386,210 filed May 4, 1981, Serial No. 260,311. Accorded Benefit of Serial No. 886,421 filed March 14, 1978, now U.S. Patent No. 4,288,434 issued September 8, 1981 and French Applications Nos. 77-08988 filed March 25, 1977 and 77-36512 filed December 5, 1977.
Application of Takao Takaya, Takashi Masugi, Hisashi Takasugi and Hiromu Kochi filed May 31, 1984, Serial No. 615,721. Accorded Benefit of Serial Nos. 040,976 filed May 21, 1979, 767,700 filed February 11, 1977, now U.S. Patent No. 4,166,115 issued August 29, 1979 and 525,499 filed August 22, 1983, United Kingdom Applications 14916/76 filed April 12, 1976 and 23490/76 filed June 7, 1976 and Japanese Application 125826/76 filed October 19, 1976.
Nelson Littell, Jr., Walter G. Weissenberger, Charles A. Muserlian, William H. Dipper, of New York, NY, Charles W. Vanacek, of Tampa, FL, for Heymes. Oral argument by Charles A. Muserlian.
Dayton R. Stemple, Jr., John J. Hart, of Spring Lake, NJ, Norman F. Oblon, Stanley P. Fisher, Marvin J. Spivak, C. Irvin McClelland, Gregory J. Maier, Arthur I. Neustadt, Robert C. Miller, Richard D. Kelly, James D. Hamilton, Eckhard H. Kuesters, Robert T. Pous, Charles L. Gholz, of Arlington, VA. Oral argument by Richard D. Kelly
Before R. Smith, Winters and Caroff
This interference involves a patent of Heymes, Patent No. 4,386,210, which issued May 31, 1983 and is assigned to Roussel Uclaf, and an application of Takaya et al (Takaya), Serial No. 615,721, filed May 31, 1984 and assigned to Fujisawa Pharmaceutical Co.
The subject matter at issue relates to certain compounds useful as intermediates in the preparation of cephem compounds having antibacterial activity. The sole count at issue reads as follows:
A syn isomer of a compound having a formula selected from the group consisting of
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R2 is a protected amino group; R is selected from the group consisting of carboxy (lower) alkyl and lower alkoxy carboxyl lower alkyl, amido (lower) alkyl and cyano (lower) alkyl and ALK is lower alkyl.
The claims of the parties which correspond to Count 2 are:
Heymes: Claims 1 through 22.
Takaya: Claims 119 through 133.
In response to an order to show cause why judgment should not be rendered against him, Heymes requested final hearing on the issues presented in the Examiner-in-Chief's Decision on Motions (Paper No. 33) with respect to four particular motions decided therein, i.e., the Takaya motions (A)(2) to substitute count 2 for count 1 and (A)(4) for benefit of his foreign priority dates, which were both opposed by Heymes and granted by the Examiner-in-Chief, and the Heymes motion (B)(2) for judgment on the ground of no interference-in-fact and to attack the benefit accorded Takaya in the interference declaration of his earlier U.S. applications, which was denied by the Examiner-in-Chief. Neither party requested a testimony period to present evidence with respect to the issues raised at final hearing. Both parties filed briefs and appeared, through counsel, at final hearing for oral argument.
Takaya Motion under Rule 1.635 to Strike
*2 On September 4, 1987 Takaya filed a motion to strike the following portions of the Heymes Reply Brief:
(A) Page 6, last two paragraphs and Exhibit A referred to therein, and
(B) Page 7, center paragraph, and the partial copies of identified patents referred to therein.
Heymes filed no opposition to the motion.
Takaya urges in support of the motion that the portions sought to be stricken are based on newly submitted evidence not previously of record. Takaya points out that Heymes could have proffered such evidence under 37 CFR 1.639 during the motion period or that Heymes could have requested a testimony period to introduce evidence. Takaya argues that it is grossly unfair for Heymes to introduce evidence without notice to Takaya for the first time in a reply brief.
The motion is granted to the extent that the indicated portions of the reply brief will be given no consideration. We agree with Takaya that it would be unfair to permit new evidence to be introduced in a reply brief. It is also contrary to the rules of practice to introduce evidence with a reply brief, i.e., § 1.671 "Evidence must comply with rules" provides in paragraph (h) as follows:
(h) Evidence which is not taken or sought and filed in accordance with this subpart shall not be admissible.
Evidence which is merely attached to a reply brief is manifestly "not taken or sought and filed in accordance with this subpart." Cf. 37 CFR 1.671(a) and 1.651(d). See also Rexroth v. Gunther, 205 USPQ 666 (Bd.Pat.Int.1979) and Shanks v. Scheffer, 204 USPQ 781 (Bd.Pat.Int.1979). Accordingly, the evidence attached to the reply brief is inadmissible.
Takaya Motion (A)(4) for Benefit of Foreign Priority Dates
At final hearing it was noted that Takaya was accorded the benefit of the February 11, 1977 filing date of U.S. application Serial No. 767,700 in the declaration of interference, and that the February 11, 1977 date was prior to the earliest date sought by Heymes, i.e., the March 25, 1977 French filing date, which was accorded Heymes by the Examiner-in-Chief in his Decision on Motions. Counsel for Heymes indicated that the Takaya motion for benefit of the April 12, 1976 British filing date and the June 7, 1976 Japanese filing date raises the same issues that are presented by Heymes' motion (B)(2) attacking the benefit accorded Takaya of earlier U.S. filing dates. Accordingly, no separate consideration will be given to the Takaya Motion (A)(4) for benefit of Foreign Priority Dates.
Takaya Motion (A)(2) to Substitute Count 2 for Count 1
The interference was declared with Heymes' involved patent claim 1 as the sole count (count 1). The claims of Takaya designated as corresponding to the count included claims 119 through 133. Takaya's claim 119 was allowed by the primary examiner in charge of the Takaya involved application in his March 1, 1985 action (Paper No. 4). The action of the primary examiner in initiating this interference with Takaya's claim 119 designated as corresponding to the count constitutes a holding by the primary examiner that Takaya's allowable claim 119 is drawn to the same patentable invention as the count (Heymes' involved patent claim 1), notwithstanding the fact that Takaya's claim 119 is broader than count 1 in certain respects. Cf. 37 CFR 1.606.
*3 Takaya moved to substitute count 2 for count 1 so that the definition of the interfering subject matter, the count, would be sufficiently broad to encompass Takaya's broadest patentable claim designated as corresponding to the count, i.e. Takaya claim 119. Takaya notes in his brief that it seems only fair and just that the count should be broad enough to encompass the subject matter of his claim 119, which the primary has designated as corresponding to the count, "so as to allow Takaya to present his best proofs as to priority of invention." Takaya points out that his motion is merely a request for a "phantom count for this interference which is broad enough to encompass all of the subject matter which the Examiner has indicated as being patentably indistinct."
We agree with Takaya that he is entitled to a count which is broad enough to encompass Takaya's broadest patentable claim which is designated as corresponding to the count. Indeed, Takaya's position is a fundamental principle in interference practice, as is set forth in the MPEP, § 2309.01 "Formulation of Counts", where three principles are set forth for the formulation of counts. The second principle reads as follows:
Accordingly, we hold that the decision of the Examiner-in-Chief granting the Takaya motion to substitute count 2 for count 1 for the reasons set forth by Takaya was correct.
Heymes argues in his brief that the substitution of count 2 for count 1 "in effect broadened the claimed subject matter and covered material not supported by Heymes in the definition of R and Alk and which included subject matter which was patentably distinct from that of Count 1." Heymes' arguments to the effect that neither Heymes nor Takaya "can support Count 2" with respect to, e.g., the definition of R are true but are of no consequence with respect to the propriety of granting the motion. Takaya could not support all the limitations in count 1 either. There is no requirement in the rules or elsewhere that the parties must "support" the count. Certainly Heymes has pointed to no authority for such a proposition. The practice of utilizing a phantom count, such as count 2, is sanctioned by the rules of practice, as note § 1.601(f), which indicates that a count which is broader in scope than all claims which correspond to it is a "phantom count" and "is not patentable to any party" in the sense that neither party provides support for the full scope of the count. See also Case v. CPC International, Inc., 730 F.2d 745, 221 USPQ 196 (Fed.Cir.1984), cert. denied, ___ U.S. ___, 224 USPQ 736, (1984).
Based on the foregoing, we are satisfied that the Takaya motion complied with the requirements of 37 CFR 1.637(a) and (c)(1) and that Takaya was therefore entitled, prima facie, to the relief requested, i.e., the substitution of count 2 for count 1. To the extent that Heymes contends in opposition to the motion that count 2 includes more than one patentable invention or that count 2 includes subject matter which is not patentable over the prior art, we believe that Heymes, as the proponent of these contentions and as the proponent that the motion was improperly decided by the Examiner-in-Chief, has the burden of establishing his contentions with sufficient evidence. However, Heymes did not request a testimony period, although he had a right to do so pursuant to 37 CFR 1.640(e) with his response to the order to show cause, and Heymes has presented no evidence to support his contentions. Rather, Heymes relies on attorney argument to support his contentions. It is well settled that argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 193 USPQ 17 (CCPA 1977), cert. denied, 434 U.S. 854, 195 USPQ 465 (1977).
*4 Heymes urges that during the prosecution of the involved Heymes patent "Heymes argued that the compounds of claim 1 of the Heymes patent, which was Count 1, was [sic] patentable over the very broad and indefinite disclosure of Takaya." Such argument does not address the question of whether the specific subject matter of count 2 includes more than one patentable invention. Moreover, as noted, supra, argument of counsel, whether ex parte or inter partes, cannot take the place of evidence lacking in the record.
Heymes Motion (B)(2) for Judgment on the Ground of No Interference-in-fact
An "interference-in-fact" exists when at least one claim of a party which corresponds to a count and at least one claim of an opponent which corresponds to the count define the same patentable invention. 37 CFR 1.601(j). Thus, to establish that there is no interference-in-fact, Heymes must establish that all the Heymes claims corresponding to the count are drawn to a separate patentable invention from every claim of Takaya which corresponds to the count. The primary examiner determined prior to instituting this interference that the involved Takaya claims 119 through 133 were drawn to the same patentable invention as Heymes' claims 1-22. Heymes, as the movant, has the burden of establishing his contention that there is no interference-in-fact with sufficient evidence. Cf. Case v. CPC International, Inc., supra, and Tezuka v. Wilson, 224 USPQ 1030 (Bd.Pat.Int.1984).
We hold that Heymes has failed to meet his burden, i.e., he has not established that there is no interference-in-fact. Heymes has presented no evidence that would support his contention that there is no interference-in-fact. Heymes does refer in his brief to certain ex parte declarations which he indicated were presented in his parent application. It is noted, however, that Heymes did not comply with the requirements of 37 CFR 1.671(e) and therefore may not rely on the ex parte declarations. [FNa1] The purpose of § 1.671(e), i.e., to provide notice to an opponent when an ex parte affidavit is relied on so that the opponent will have the opportunity to cross-examine the affiant, if desired, or to present rebuttal evidence, would be frustrated if Heymes was permitted to rely on such ex parte declarations without introducing the declarations into evidence in the manner provided for by the rule.
Moreover, as noted by Takaya, even if the ex parte declarations were in evidence, they could not establish that the Heymes' claims are drawn to a separate patentable invention than, e.g., Takaya claim 119, because they do not compare compounds within Heymes' claims to compounds within Takaya's claim 119. Rather, the comparison is with compounds outside the scope of Takaya's involved claims. We agree with Takaya that such evidence would have been irrelevant to the issue of interference-in-fact.
*5 Heymes notes on page 8 of his brief that all of the Takaya applications have the same disclosure since they are merely a series of divisional applications of the same parent application. Therefore, Heymes adds "if it is decided that there is no interference in fact due to the lack of adequate disclosure of the compounds of the count of the interference" in Takaya's involved application, Takaya should be denied benefit of the related U.S. applications. The appropriate statement of the issue of Takaya's support for the compounds of the interference is whether Takaya has support in his specification for the compounds claimed in his claims 119 through 133 which correspond to the count. Squires v. Corbett, 560 F.2d 424, 194 USPQ 513, 519 (CCPA 1977). The issue is properly raised by a motion pursuant to 37 CFR 1.633(a) for judgment that an opponent's claim corresponding to a count is unpatentable to the opponent under 35 USC 112. Heymes filed no such motion for judgment that Takaya's claims 119 through 133, which correspond to the count, are unpatentable to Takaya under 35 USC 112, and Heymes is therefore not entitled to raise the issue at final hearing. 37 CFR 1.655(b). However, as noted by Heymes, the issue of Takaya's support in his application for the compounds in his claims 119 through 133 is related to the question of benefit, and Heymes' arguments regarding Takaya's support for the compounds claimed in his involved claims will be considered, infra, with respect to Heymes' motion to attack the benefit accorded Takaya of his U.S. parent application filing dates.
Heymes Motion (B)(2) to Attack the Benefit Accorded Takaya in the Interference Declaration
As noted, supra, the primary examiner in charge of the involved Takaya application allowed claim 119. Thus, it was the position of the primary examiner that the Takaya specification provides adequate support, i.e., written description and enablement as required by 35 USC 112, for the subject matter set forth in Takaya claim 119, which is within the scope of the count at issue. The action of the primary examiner in according Takaya the benefit of the filing dates of his earlier U.S. applications was consistent with his allowance of claim 119 because, as acknowledged by Heymes, all the Takaya applications have the same disclosure since they are merely a series of divisional applications of the same parent application.
Takaya is entitled to the benefit of his earlier U.S. filing dates if the Takaya specifications provide adequate support as required by 35 USC 112, i.e., written description and enablement, for the compounds set forth in his claim 119, which are within the scope of the count at issue. We have carefully considered the arguments set forth by the parties in their briefs, and we find that we agree with the decision of the primary examiner and the Examiner-in-Chief that the Takaya specifications provide adequate support for the compounds of Takaya involved claim 119. Accordingly, we hold that Takaya is entitled to the benefit of the earlier U.S. filing dates as well as his foreign priority dates.
*6 Heymes urges that the Takaya application can only be "considered to be a shotgun type of disclosure which has very generally suggested possible substituents which would not lead one skilled in the art to applicant's compounds." Heymes notes further that the R2 substituent in the Takaya compounds of claim 119 includes as the preferred embodiments listed on page 20 of the involved application seven different types of substituents from which an astronomical number of compounds could be derived. Heymes contends that one skilled in the art would not be led to the compounds within the count because there is no description of any species falling within the count.
We disagree with Heymes' contention that the lack of disclosure by Takaya of a species within the count requires that we conclude that Takaya fails to meet the written description requirement of 35 USC 112. It is not necessary that the claimed subject matter be described in ipsis verbis to satisfy the written description requirement of 35 USC 112. Fields v. Conover, 443 F.2d 1386, 170 USPQ 276 (CCPA 1971) and In re Lukach, 440 F.2d 1263, 169 USPQ 795 (CCPA 1971). Nor does the statute require a specific example. The issue is whether the Takaya specification conveys clearly to those skilled in the art that Takaya invented the compounds at issue. We believe that Takaya's specification conveys that message.
Takaya's claim 119 which corresponds to the count reads as follows:
--119. A syn isomer of a compound having a formula selected from the group consisting of
wherein R7 is a protected amino group; R2 is selected from the group consisting of carboxy (lower) alkyl and lower alkoxy carbonyl (lower) alkyl; and A is lower alkyl.--
As pointed out by Takaya in his brief, support for claim 119 may be found on page 10 of the involved application at formula IIIh:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
In the formula R7a is a protected amino group as specified at line 15 of page 10. Za is either carboxy or protected carboxy (page 11, line 10), and the definition of protected carboxy is found on page 14, line 25 through page 15, line 26 where the first example is esterified carboxy in which the ester may be lower alkyl. Preferred groups for R2 are disclosed on page 20, lines 18 through 29. Specifically set forth for R2 are carboxy (lower) alkyl and lower alkoxy carbonyl (lower) alkyl, the two groups claimed in claim 119. Although, as noted by Heymes, there are seven different types of substituents listed for R2, five of which are not within the scope of the count, we agree with Takaya that it is appropriate to look at the examples of the Takaya specification to determine whether one of ordinary skill in the art would be led to the compounds of claim 119. As pointed out by Takaya on page 17 of his brief, R2 in the examples of the Takaya specification is either methyl, allyl, 2-t-butoxycarbonylmethyl, carboxy-methyl, carboxyethyl or 1-t-butoxycarbonylethyl. Thus, four of the six groups utilized in the examples for R2 are within Takaya's claim 119. We agree with Takaya that from the written description in the disclosure, the preferred members which were set forth and the working examples of the application one is led directly to the compounds of claim 119. The issue is not whether one following the Takaya disclosure would necessarily produce the compounds of claim 119; rather, it is whether he would necessarily recognize that such a combination was disclosed as a construction which might be selected if desired. Byrne v. Trifillis, 442 F.2d 1390, 170 USPQ 32 (CCPA 1971). We believe that one following the Takaya disclosure would necessarily recognize that the compounds of claim 119 were disclosed as a combination that might be selected if desired, i.e., the message would be conveyed that Takaya invented the compounds of claim 119.
*7 Heymes concedes that Takaya teaches "phenyl substituted compounds with a carboxyalkyl substituent but none of the thiazolyl compounds disclosed and claimed by Takaya et al teach any thiazolylamino substituted compounds with this type of substituent but rather the substituent is alkyl and not carboxyalkyl or alkoxycarbonylalkyl." In other words Heymes is pointing out that Takaya's disclosure includes the compounds R1 - C = N - OR@2 where R1 may be a phenyl group or a thiazolyl group (or its tautomeric isomer), and that in the Takaya examples the compounds with R2 groups within claim 119 have phenyl groups for R1. Those examples with R1 as thiazolyl as in claim 119 do not have carboxyalkyl or alkoxycarbonylalkyl for R2. This is just another way of saying that Takaya does not disclose a specific example within claim 119. However, we agree with Takaya that one skilled in the art would nevertheless be directed to the compounds of claim 119 because Takaya teaches that R1 may be phenyl or thiazolyl, and one skilled in the art would recognize that the compounds with R1 as phenyl could also be prepared with R1 as thiazolyl. Further, one skilled in the art would be motivated to prepare the compounds with R1 as thiazolyl in view of the comparative tests set forth in the Takaya specification which indicate that in 5 out of 6 comparisons the thiazolyl compounds resulted in superior activity than the phenyl compounds.
Heymes relies repeatedly on the fact that he was able to persuade the primary examiner in his involved application that the claims within the count were patentable over Takaya's parent patent. Thus, Heymes urges the "patent office" has already found that the compounds of the count are not supported in the Takaya disclosure. Apparently, Heymes believes that the decision of the primary examiner during the ex parte prosecution of his involved application should be binding on Takaya in this inter partes proceeding and on the Board of Patent Appeals and Interferences. We know of no authority for such a proposition, and we accordingly reject the notion that Takaya is not entitled to a decision on the merits from this Board.
Heymes also argues that Takaya does not disclose the superior antibacterial activity that results from the use of compounds within the count. Thus, Heymes states in his reply brief that it "is impossible to deduce from the Takaya application that carboxyalkoxyimino thiazolyl substituted compounds are superior to carboxyalkoxyimino phenyl ... substituted compounds or thiazolyl methoxyimino substituted compounds." However, the issue involved in Takaya's entitlement to the benefit of his prior cases is whether Takaya has support for the compounds of his claim 119 as required by 35 USC 112, i.e., written description and enablement. There is no requirement in 35 USC 112 for a disclosure of unexpected, superior activity. Moreover, even if the comparative results of, e.g., the activity of carboxyalkoxyimino thiazolyl compounds and thiazolyl methoxyimino compounds were at issue, Heymes has presented no evidence in this interference proceeding to substantiate his position as has been noted, supra.
*8 For the foregoing reasons, judgment as to the subject matter of count 2 is hereby awarded to Takao Takaya, Takashi Masugi, Hisashi Takasugi and Hiromu Kochi, the senior party. Accordingly, Rene Heymes is not entitled to his patent containing claims 1-22 corresponding to count 2, and Takao Takaya, Takashi Masugi, Hisashi Takasugi and Hiromu Kochi are entitled to a patent containing claims 119 through 133.
Ronald H. Smith
Sherman D. Winters
Marc L. Caroff
FNa1. 37 CFR 1.671(e) reads as follows:
A party may not rely on an affidavit filed by that party during ex parte prosecution of an application, an affidavit under § 1.608, or an affidavit under § 1.639(b) unless: (1) A copy of the affidavit is or has been served and (2) a written notice is filed prior to the close of the party's relevant testimony period stating that the party intends to rely on the affidavit. When proper notice is given under this paragraph, the affidavit shall be deemed filed under § 1.672(b). A copy of the affidavit shall be included in the record (§ 1.653).