Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 GANGULY ET AL.
SUNAGAWA ET AL.
Patent Interference No. 101,279
July 7, 1987
Application of Ashit K. Ganguly, Viyyoor M. Girijavallabhan, Adriano Afonso and Jay Weinstein filed December 6, 1982, Serial No. 446,928.
Application of Makoto Sunagawa, Haruki Matsumura, Takaaki Inoue, and Masao Enomoto filed July 15, 1982 Serial No. 398,489. Accorded benefit of Japan application No. 56-211416 filed December 28, 1981.
Gerald S. Rosen, Anita W. Magatti, Bruce M. Eisen and Thomas D. Hoffman for Ganguly et al.
Richard C. Sughrue, John H. Mion, Donald E. Zinn, Thomas J. Macpeak, Robert J. Seas, Jr., Darryl Mexic, Robert V. Sloan, Peter D. Olexy, J. Frank Osha, Waddell A. Biggart, Robert G. McMorrow, Louis Gubinsky, Neil B. Siegel and David J. Cushing for Sunagawa et al.
Before Milestone, Torchin and R. Smith
This interference involves an application of Ganguly et al (Ganguly), Serial No. 446,928, filed December 6, 1982 and assigned to Schering Corporation, and an application of Sunagawa et al (Sunagawa), Serial No. 398,489, filed July 15, 1982. The Sunagawa application is unassigned according to Patent and Trademark Office records.
The subject matter at issue relates to certain penem compounds useful as antibacterial agents. Claim 18 of Sunagawa and claim 21 of Ganguly correspond to Count 1, the sole count, which is a phantom count that reads as follows:
Both parties filed briefs and waived appearance at final hearing for oral argument. Neither party raised the issue of interference-in-fact in his brief at final hearing.
Sunagawa is senior party based on the December 28, 1981 filing date of his Japanese Application Serial No. 56-211416. Ganguly has not contested Sunagawa's entitlement to his Japanese filing date. Sunagawa relies on his December 28, 1981 Japanese filing date for priority in this interference and has presented no testimony to establish an earlier date. Accordingly, Sunagawa is restricted to his December 28, 1981 date for conception and constructive reduction to practice.
Ganguly relies in his brief on an evidentiary record in an effort to establish conception prior to Sunagawa's December 28, 1981 Japanese filing date, actual reduction to practice after Sunagawa's December 28, 1981 date and reasonable diligence from a time prior to Sunagawa's December 28, 1981 date to the time of reduction to practice by Ganguly. Ganguly does not allege an earlier reduction to practice than the date relied on by Sunagawa. As noted by Ganguly in his brief, the questions presented for determination are as follows:
*2 (1) Did Ganguly conceive the invention of the count at a time prior to the December 28, 1981 priority date of Sunagawa.
(2) Did Ganguly reduce to practice the invention of the count after Sunagawa's priority date.
(3) Did Ganguly exercise reasonable diligence from a time prior to Sunagawa's priority date to the time of the reduction to practice of the invention by Ganguly.
Ganguly's Case for Prior Conception
Ganguly, as the junior party to this interference whose application was copending with the application of Sunagawa, has the burden of proving prior invention by a preponderance of the evidence. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976). In an effort to sustain their burden, Ganguly submitted an evidentiary record including three declarations and associated exhibits. References to the Ganguly exhibits will be designated GX, and references to the declarations will be indicated by the declarant. The first of the three declarations, the inventors' declaration, was executed by co-inventors Ganguly, Girijavallabhan, Afonso and Weinstein; the second by Hare and Naples; and the third by Fett.
The inventors declare on page 2 of their declaration that they conceived of the invention prior to December 28, 1981, and that a compound of the count identified as Sch No. 33170 was prepared by Fett under their direction and control. Fett started with isonipecotic acid (4-piperidenecarboxylic acid) and proceeded through a series of reactions to Sch No. 33170. In support of the declaration that the inventors conceived of the invention prior to December 28, 1981, Ganguly relies on GX 4, which is a copy of the preliminary statement with a copy of Invention Record 1778 attached thereto, and GX 5. Ganguly urges in his brief that GX 4 and 5 make it amply clear that Ganguly conceived of the count on or about September 10, 1979, but, in the event that the 1979 conception date is deemed insufficient, then Ganguly conceived on or about August 25, 1981 as shown in Exhibit 11. Ganguly notes in his brief that GX 4 and 5 are discussed on pages 2 and 3 of the inventor's declaration and GX 11 is discussed at pages 6 and 7 of the inventor's declaration.
Opinion re Conception by Ganguly
We hold that Ganguly has not established conception prior to December 28, 1981 by a preponderance of the evidence.
Preliminarily, we agree with Sunagawa that Ganguly's brief does not meet the requirements of 37 CFR 1.254, which specifies that the junior party shall present in his brief "a clear statement of the points of law or fact upon which he relies". As noted by Sunagawa, Ganguly merely sets forth broad legal conclusions with no mention of the facts. We agree with Sunagawa that the Ganguly brief is simply an invitation to read the Ganguly record and does not fairly comply with the requirements of the rule for briefs at final hearing.
Ganguly's contention that GX 4 and 5 make it clear that Ganguly conceived of the count on or about September 10, 1979 is untenable in our view. We find no disclosure of the compound of the count in either GX 4 or 5. The only testimony relied on by Ganguly with respect to these exhibits is that of the inventors on pages 2 and 3 of their declaration. The indicated testimony with respect to GX 4 merely indicates that Invention Disclosure 1778, which is attached to GX 4, is in the handwriting of co-inventor Girijavallabhan, is signed on June 30, 1981 by co-inventors Girijavallabhan and Ganguly and "shows a series of reactions ... which series of reactions was used to prepare Sch No. 33170". The series of reactions set forth depicts reactions which result in a penem compound, but the depiction is of a broad genus that covers thousands of compounds with no disclosure of the compounds of the count. Although the inventors testified that the reactions were "used to prepare Sch No. 33170", there is no evidence that Sch No. 33170 was prepared before December 28, 1981; rather, the testimony of Fett indicates that she did not prepare the compound until April 7, 1982. It is well settled that conception of a genus is not conception of a species. D'Silva v. Drabek, 214 USPQ 556 (Bd.Pat.Int.1981), aff'd mem., 691 F.2d 513 (CCPA 1982); Davidson v. Carpenter, 123 USPQ 171 (Bd.Pat.Int.1959). Conception of an invention consists in the complete performance of the mental part of the invention, and we find no evidence in GX 4 that would corroborate the inventors' assertion that they conceived of the invention of the count prior to December 28, 1981.
*3 Ganguly's reliance on GX 5 is also misplaced because there is plainly no disclosure of the compounds of the count in GX 5. The testimony of the inventors with respect to GX 5 merely states that it "shows the preparation of 4-(tetrahydro pyranylthiocarbonlyoxy) azetidin-2-one". The inventors did not testify as to the relevance, if any, of the preparation of GX 5 to conception of the compounds of the count. It is well settled that exhibits do not ordinarily speak for themselves; they must be attested to and explained by a competent witness. Kalnoki-Kis v. Land, 214 USPQ 636 (Bd.Pat.Int.1982), Gipstein v. Contois, 191 USPQ 688 (Bd.Pat.Int.1975).
We also disagree with Ganguly's alternate contention that, in the event that the September 10, 1979 conception date is deemed insufficient, then Ganguly conceived the invention of the count on or about August 25, 1981 as shown in GX 11, which is discussed at pages 6 and 7 of the inventor's declaration. The only testimony with respect to GX 11 is the indicated testimony of the inventors on pages 6 and 7 of their declaration that GX 11 includes copies of the handwritten "Target Compound List" in the handwriting of co-inventor Afonso, which show numerous "(5R,6S,8R)-6-(1-hydroxyethyl)-2-penem-3-carboxylic acids substituted in the 2- position by various amino-containing alkyl ... and 2- (azacycloalkyl) groups including 4-piperidinyl (on page 2) and shows on [sic] a series of reactions on pages 2 and 3 that are reported in the RECORD OF INVENTION DISCLOSURE NO. 1778 and performed in Exhibits 10, 12, 14 and 20."
As noted by Sunagawa, GX 11 is unsigned and not witnessed. Since there is no testimony concerning GX 11 by anyone other than the inventors, its existence as of August 25, 1981 is totally uncorroborated. Thus, we find GX 11 and the testimony of the inventors relating thereto inadequate to establish conception by Ganguly prior to December 28, 1981. Moreover, an examination of GX 11 indicates that, contrary to the implication of the testimony of the inventors, the exhibit does not show a 4-piperidinyl group, the substituent within the count. Rather, the exhibit merely indicates that the substituent may be piperidinyl, generically, without specifying 4-piperidinyl. Thus, the disclosure of GX 11 may "include" 4-piperidinyl within the genus disclosed, but it does not specifically identify the 4-piperidinyl. As noted, supra, it is well settled that conception of a genus is not conception of a species within that genus. D'Silva v. Drabek, supra; Davidson v. Carpenter, supra.
Ganguly urges that the conception is corroborated by the witness Fett in GX 12 and 14, as well as numerous exhibits in the Ganguly record. However, we find no disclosure of the compounds of the count in GX 12, nor is there any explanation by Fett or Ganguly how GX 12 corroborates the conception of the compounds of the count prior to December 28, 1981. GX 14 relates to work performed in March and April of 1982 and therefore cannot corroborate the existence of conception prior to December 28, 1981. Suffice it to say, we find no evidence in the Ganguly record independent of the inventors that would corroborate the testimony of the inventors that they conceived the invention prior to December 28, 1981.
*4 Ganguly notes in his reply brief that the case law on corroboration cited by his opponent is old and has been superceded by the "rule of reason" as enunciated in Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980) and Lacotte v. Thomas, 758 F.2d 611, 225 USPQ 633 (Fed.Cir.1985). In our view the "rule of reason" is of no avail to Ganguly. The rule of reason has eased the requirement of corroboration, but, as noted by the Court in Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936 (CCPA 1981), the adoption of the "rule of reason" has not altered the requirement that evidence of corroboration must not depend solely on the inventor himself. There must be evidence independent from the inventors corroborating the conception for Ganguly to prevail. Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed.Cir.1985). As we have noted, supra, we find no evidence in the Ganguly record independent of the inventors that would corroborate the existence of a conception of the invention of the count prior to December 28, 1981.
Ganguly argues in his reply brief that Sunagawa has improperly used its main brief to rebut and impeach the Ganguly record and testimony. According to Ganguly, the fact that Sunagawa did not cross-examine the Ganguly witnesses obligates Sunagawa and the Board to accept the "unrebutted" testimony of Ganguly at face value unless it is clearly inconsistent. Ganguly cites Bindra v. Kelly, 206 USPQ 570 (Bd.Pat.Int.1979) as support for this proposition. We disagree with Ganguly's application of the Bindra decision. The fact that Sunagawa did not cross-examine the Ganguly witnesses does not in our view relieve Ganguly of his burden of proof; nor does it preclude Sunagawa from pointing out deficiencies. We have found that the testimony of the Ganguly inventors as to the legal conclusion that they conceived of the invention prior to December 28, 1981 is not supported by evidence in the record independent of the inventors. The Board in Bindra took certain stipulated testimony at face value "in the absence of clear and convincing reasons to the contrary". Here we have found ample reason not to take the inventors' testimony as to legal conclusions at face value.
In view of our holding that Ganguly has not proven conception of the invention of the count prior to December 28, 1981, Ganguly's case for prior invention must fail, and we find it unnecessary to consider Ganguly's evidence of actual reduction to practice on April 7, 1982 or of reasonable diligence from a time just prior to Sunagawa's December 28, 1981 priority date until an actual or constructive reduction to practice. In the interest of completeness, however, we note for the record that we find that Ganguly has not proven the actual reduction to practice or the reasonable diligence for reasons adequately set forth in Sunagawa's brief.
*5 For the foregoing reasons, priority of invention of the subject matter of the count at issue is awarded to Makoto Sunagawa, Haruki Matsumura, Takaaki Inoue and Masao Enomoto, the senior party.
BOARD OF PATENT APPEALS AND INTERFERENCES
Gordon K. Milestone
Norman G. Torchin
Ronald H. Smith
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