Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE SETSURO FUJII, EIZOU HATTORI, MITSUTERU HIRATA, KOICHIRO
WATANABE, KAZUHIRO ONOGI AND MASAHIKO NAGAKURA
Appeal No. 87-0586
June 28, 1989
Heard: June 12, 1989
Application for Patent filed November 12, 1985, Serial No. 796,525. Benzoylpiperazine esters and a Process For Their Production.
Norman F. Oblon et al for appellants
Primary Examiner--Robert Gerstl
Torchin, Goolkasian, W. Smith and J. Smith
This appeal is from the final rejection of claims 1-13, all claims extant. [FN1]
Because of the significance of the issues raised in this case, as discussed below, an expanded panel has been assigned to decide the questions presented.
The claimed invention is directed to benzoylpiperazine esters exhibiting chymotrypsin inhibitive activity. Claim 1 is sufficiently exemplary:
1. A benzoylpiperazine ester represented by the formula:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
A represents a single bond or a C 1-C 2 alkylene group, vinylene group, - 0-alkylene group or methine group;
1 represents a (C 9-C 11) bicyclic carbon ring which may be substituted with a lower alkyl group, lower alkoxy group, oxy group, nitro group or a halogen atom, or may be partially saturated; a fluorene group which may contain an oxo group; a fluorenylidene group; and anthracene group; a phenanthrene group which may be substituted with a lower alkyl group, or may be partially saturated; a benzofuran or thianaphthene group which may be substituted with a lower alkyl gr oup or lower alkoxy group; a benzopyran or benzoazine group which may be substituted with an oxo group or phenyl group or may be partially saturated; a phthalimide group which is attached through a N atom; a benzodiazine group; an is ooxazole which may be substituted with a lower alkyl group or phenyl group; an alkylene dioxybenzene or xanthene group; and
2 represents an alkyl group, C 6 cycloalkyl group, C 6 cycloalkyl (C 1) alkyl group or benzyl group, excepting the case where A is a single bond, R 1 is ??, and R 2 is a methyl group.
The references of record relied on are:
Fujii et al. (Fujii II) U.S. 4,443,603 Apr. 17, 1984
filed May 24, 1982
Fujii et al. (Fujii I)
European Patent Application 71433 [FN2] Feb. 09, 1983
Fujii et al. (Fujii III)
Japanese Kokai 58-021662 [FN3] Feb. 08, 1983
The claims stand rejected as follows:
(1) Claims 1, 7, 11 and 13 under 35 USC 102(a) as being anticipated by Fujii I.
(2) Claims 1 and 3-13 under 35 USC 103 as being unpatentable over Fujii I in view of Fujii II.
(3) Claims 2 and 14 are rejected under 35 USC 103 as being unpatentable over Fujii I. [FN4]
(4) Claims 1, 7, 11 and 13 are rejected under 35 USC 102(d) as "being barred" by Fujii III.
*2 We reverse as we can sustain none of these rejections.
The examiner is of the view that Kokai are references under § 102(d) [FN5] because they "are more than mere Applications [sic], and approach invention certificates within the meaning of § 102(d)." It has been laid to rest, at least insofar as this board is concerned, that a Kokai is not a patent within the meaning of § 102(d). Ex parte Fujishiro, 199 USPQ 36 (Bd.App.1977). While a Kokai may result in certain legal consequences similar to an inventor's certificate, as pointed out by the examiner, it is not in fact an inventor's certificate. See 37 CFR 1.55(b) and MPEP 201.13(a).
Because Congress saw fit to include inventor's certificates along with patents in § 102(d), documents which may have similar legal consequences as inventor's certificates in the country in which they are issued do not per se rise to the level of inventor's certificates as to their legal consequences under § 102(d). Congress has not, at least as yet, seen fit to include Kokai in § 102(d); it defies acceptable principles of statutory interpretation to include Kokai because of their (alleged) analogy to inventor's certificates. Cf. In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978) and Ex parte Lander, 223 USPQ 687 (Bd.App.1983).
Accordingly, we cannot sustain this rejection.
Rejections (1), (2) and (3)
The examiner's underlying basis for these rejections rests on his determination that appellants are not entitled to benefit of the Japanese benefit applications (see n. 1) because they were not the "first filed" applications within the meaning of 35 USC 119 which provides, in pertinent part:
35 USC 119 Benefit of earlier filing date in foreign country; right of priority.
An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed.... [Emphasis added]
It is the examiner's position that the "first filed" application was in fact Fujii III (see n. 3). He points to formula (I-c) [FN6] on page 8 of Fujii III (translation) and notes that selection of certain substituents included would result in compounds within the scope of instant claim 1. He further points to a specific compound on page 14 within that formula--1-ethyl-4-[4-(1,2,3,4- tetrahydro-1-naphthoyloxy) benzoyl] piperazine methane sulfonate--which is indeed the salt of a compound falling within the scope of claim 1.
*3 It is well settled that, in order for an applicant to be accorded the benefit of a "first filed" foreign application under 35 USC 119, the foreign application must (1) support the subject matter claimed in the United States application in the manner required by the first paragraph of 35 USC 112, and (2) have been filed within twelve months prior to the filing date of the United States application. See In re Gosteli, --- F.2d ---, 10 USPQ 2d 1614, 1616 (Fed.Cir.1989); In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 90 (CCPA 1976); Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973). Obviousness is not the test, Cf. In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). It follows, therefore, that if a foreign application does not meet the first test, i.e., does not provide 35 USC 112, first paragraph, support for the claimed subject matter, then it is immaterial whether or not the United States application was filed within the subsequent twelve-month period.
In the present case, we do not agree with the examiner that Fujii III was applicants' "first filed" foreign application, because it does not contain, nor does the examiner allege that it contains, a written description for a compound where, say, R 1 (of instant claim 1) can be, inter alia, an "oxy group, nitro group or a halogen atom ... or ... a fluorene group which may contain an oxo group; a fluorenylidene group...." It therefore does not provide 35 USC 112, first paragraph, support for the claimed subject matter, and consequently cannot constitute appellants' "first filed" foreign application within the meaning of 35 USC 119.
Accordingly, it appears from this record that the Japanese application filed on June 25, 1982 was appellants' "first filed" foreign application. Since the examiner has raised no question as to support for the claimed subject matter in this Japanese application, see note 1, supra, and appellants' parent United States application was filed within twelve months thereof, they are entitled on this record to be accorded its benefit and as a result, Fujii I is removed as a reference against them, rendering the rejections unsustainable.
Appellants would further argue that Fujii III is not the "first filed" because Fujii III "is not directed to the 'same invention' as the application on appeal." [FN7] However, in light of the foregoing, we need not reach this issue.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Norman G. Torchin
John T. Goolkasian
William F. Smith
John D. Smith
FN1. The application is a continuation of U.S. Application Serial No. 505,497, filed June 17, 1983. Benefit under 35 USC 119 is claimed for two Japanese applications: 57-109192, filed June 25, 1982, and 58-75868, filed April 28, 1983. Except as otherwise indicated in this opinion, the Examiner does not question appellants' entitlement to benefit.
FN2. The priorites for Fujii I are two Japanese applications: 228273/81, and 11338/82.
FN3. The Kokai derives from Japanese Patent Application No. 56-18172, filed July 28, 1981.
FN4. This rejection, though unexplained in the Examiner's answer, is apparently based on the holding in In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.Cir.1985).
FN5. 35 USC 102 provides, in pertinent part:
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent
A person shall be entitled to a patent unless--
* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States.
* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *
FN6. R 30A 3-COO??P 3CO-Q 3
FN7. Claim 1 of Fujii III reads: "A medicine for the treatment of diabetes, comprising insulin and a synthetic phenyl ester type chymotrypsin inhibitor."
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