Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Interference No. 101,747
July 30, 1991
Final Hearing December 5, 1990
Substituted Diphenyl Ethers
Application of William S. Grove, filed June 16, 1982, Serial No. 388,849. Accorded benefit of Serial Nos. 065,480 filed August 10, 1979 and 163,460 filed June 27, 1980.
Application of Wayne O. Johnson, filed December 19, 1984, Serial No. 705,406. Accorded benefit of Serial Nos. 039,471 filed May 16, 1979 and 104,596 filed December 17, 1979.
Edward L. Whitfield, Mark Levin and Maurice B. Stiefel for Grove Oral argument by Maurice B. Stiefel
George W.F. Simmons, Robert A. Doherty, Terence P. Strobaugh, Franklin D. Wolffe, Rudolph E. Hutz and Joseph D. Michaels for Johnson. Oral argument by Rudolph E. Hutz
Before R. Smith, Sofocleous and Metz
This interference involves an application of Grove, assigned to PPG Industries, and an application of Johnson, assigned by an unrecorded assignment from Rohm and Haas Company to BASF Corp.
The interference concerns certain substituted diphenyl ether compounds which are useful as herbicides and which are analogs of a compound commercialized by Rohm and Haas as BLAZER. BLAZER has the following structure:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The analogs are made by substituting a different moiety for the sodium carboxylate of BLAZER. The subject matter in issue here is defined by count 2 which is as follows:
A compound having the formula
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
R@1 and R@2 are independently selected from hydrogen or methyl;
R 3 is methyl or ethyl.
Grove's claims 10 to 12, 14 and 20 and Johnson's claims 3, 4, 6, 8, 12, 14, 15, 17, 19, 23, 25 to 27, 32, 34, 35 and 38 to 42 correspond to the count. No question of interference-in-fact or separate patentability of claims in accordance with 37 CFR 1.633(b) and (c)(3) and (4) has been raised.
In the Decision on Preliminary Motions, the examiner-in-chief (EIC) granted, over Grove's opposition, Johnson's preliminary motion (Paper No. 12) under 37 CFR 1.633(c)(1) to redefine the interference by substituting count 2 for count 1 and denied Grove's preliminary motions (Paper No. 11) to deny Johnson benefit and for judgment against Johnson. Grove's preliminary motion (Paper No. 36) for judgment under 37 CFR 1.633(a) on the ground that Johnson violated his duty of disclosure under 37 CFR 1.56 was dismissed. After rendering the decision, the EIC set times for both parties to present priority testimony. After the close of Grove's rebuttal testimony period, Johnson filed a motion (Paper No. 85) to suppress evidence. Both parties filed records and briefs and appeared, through counsel, at final hearing. After final hearing, Grove filed a motion (Paper No. 109) to remand this interference to the EIC.
*2 Preliminarily, Grove's main brief raises an issue of Johnson's purported failure to comply with the duty of disclosure requirements of 37 CFR 1.56. We will not consider the issue as it is the policy of the PTO not to consider such an issue. See the Commissioner's Notice, dated September 8, 1988, 1095 O.G. 16, as clarified in the Notice, dated October 17, 1988, 1096 O.G. 196.
The following issues, raised in the briefs or after final hearing, are before us:
1. Whether this interference should be remanded to the EIC as requested in Grove's motion to remand?
2. Whether Johnson's preliminary motion to redefine the interfering subject matter by substituting count 2 for count 1 should have been denied as urged in Grove's opposition to the motion?
3. Whether Johnson's claims corresponding to the count are unpatentable under 35 U.S.C. 102(b) as urged in Grove's preliminary motion for judgment?
4. Whether Johnson's parent U.S. application Serial No. 039,471 fails to disclose the best mode by Johnson as urged in Grove's preliminary motion to deny benefit?
5. Whether Johnson's motion to suppress evidence should be granted?
6. Whether Grove's record establishes a prior conception coupled with diligence just prior to Johnson's entry into the field up to Grove's reduction to practice (actual or constructive)?
7. Whether Grove's record establishes actual reduction to practice prior to Johnson's effective filing date?
8. Whether Johnson's record establishes actual reduction to practice prior to Grove's date of invention?
Grove's Motion for Remand
On January 28, 1991, Grove filed a miscellaneous motion (Paper No. 109) under 37 CFR 1.635 to remand this interference to the EIC or alternatively for this Board to consider an issue of Johnson's failure to disclose the best mode. An opposition and a reply thereto have been filed.
The motion states that the Johnson brief is not clear as to which of the three methods of synthesis for the compound, RH 43360, Johnson relies upon for an actual reduction to practice but that at final hearing counsel for the party Johnson argued that the third method resulted in a successful reduction to practice. According to the motion, the first two methods resulted in the obtention of an impure compound, whereas the third method resulted in the obtention of a pure compound. The motion contends that since the third method is not disclosed in Johnson's involved or benefit applications, these applications fail to disclose the best mode contemplated by Johnson for making and using the invention.
The motion to remand this interference to the EIC is denied. 37 CFR 1.640(b)(2) provides that after a decision is rendered on preliminary motions, a further motion under 37 CFR 1.633 will not be considered except as provided under 37 CFR 1.655(b). Therefore, we will not remand this interference to the EIC.
*3 The alternative motion for this Board to consider the issue of best mode is denied. Pursuant to 37 CFR 1.655(b)(3), a party is not entitled to raise for consideration at final hearing a matter which could have been properly raised by motion unless the party shows good cause why the issue was not timely raised by motion. Cf. Bayles v. Elbe, 16 U.S.P.Q.2d 1389 (BPAI 1990). Grove has raised this best mode issue some 54 days after final hearing, but the motion makes clear to us that Grove became, or should have become, aware of the facts concerning this issue after Johnson had presented testimony some 25 months ago. Nowhere has Grove shown good cause why a belated preliminary motion was not and could not have been filed 25 months ago. Nor has Grove shown good cause why the issue was not and could not have been raised in his main brief. It is not unusual for a party during its assigned testimony period to present evidence in an attempt to establish the first date on which the invention was reduced to practice and subsequent date(s) on which the invention was reduced to practice, where all the dates are based on experiments conducted at different times. Under these circumstances the mere fact that Johnson at oral argument chooses to rely upon some but not all of the alleged reductions to practice would not constitute good cause within the meaning of 37 CFR 1.655(b)(3) to justify excusing Grove's failure to timely raise the issue presented here in his motion.
THE PARTIES' RECORDS
During his period for testimony-in-chief, Grove presented priority testimony to show (1) an actual reduction to practice prior to Johnson's effective filing date or alternatively (2) a date for conception prior to Johnson's effective filing date coupled with the exercise of diligence from just prior to Johnson's date up to Grove's reduction to practice (actual or constructive). During his testimony period, Johnson presented testimony to show a date for actual reduction to practice prior to any date of invention alleged by Grove. If the Johnson record establishes actual reduction to practice prior to any date alleged by Grove, Johnson will prevail and many of the issues raised here will become moot. Accordingly, we will consider Johnson's case for priority first.
For his case for priority of invention, Johnson purports to have reduced to practice the invention of the count by the successful synthesis and testing of two compounds, RH 43360 and 48675, prior to Grove's effective filing date. Since the applications of the parties are copending, Johnson has the burden of proving his case by a preponderance of the evidence. Jepson v. Egly, 231 F.2d 947, 109 USPQ 354 (CCPA 1956); Hess v. Bland, 347 F.2d 835, 146 USPQ 378 (CCPA 1965). In support of his case, Johnson presented an evidentiary record consisting of the testimony of 14 witnesses [FN1] together with 35 associated exhibits. The testimony will be referred to as JR followed by its page number; each exhibit, as JX followed by its number.
*4 The invention in issue was developed by scientists employed by Rohm and Haas Company and the involved application based on this invention was later assigned by Rohm and Haas to BASF Corporation. Dr. Wayne Johnson, a Ph.D. organic chemist and the named inventor of the involved Johnson application, was employed by Rohm and Haas Company during the relevant time period. In July 1969, he was a synthesis chemist in the herbicides group at the company's Spring House Research Laboratories located in Pennsylvania. In January 1973, he became responsible for synthesizing nitrodiphenyl ethers and his responsibility for this area of research continued until sometime in the late summer or early fall of 1975 at which time responsibility was transferred to Dr. Colin Swithenbank, a Ph.D. chemist. Reporting directly to Dr. Johnson was Mrs. Helen Weber, a laboratory assistant. Dr. Johnson would assign Mrs. Weber experiments to perform and would review her work on a regular basis. When a product was prepared, he would review the IR and NMR results obtained by her. JR 212 to 215, 407 to 418, 854 and 858.
In the spring of 1975, Dr. Johnson directed Mrs. Weber, to synthesize 1- (ethoxycarbonyl)ethyl 5-(2-chloro-4-trifluoromethyl phenoxy)-5-nitrobenzoate, a compound having the following structure:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
He instructed her with respect to the reagents and procedures to use to make the compound which, he believed, could be used as a potential herbicide. On May 9, 1975, Mrs. Weber reacted the starting material (HGW 72:58), the acid chloride analog of BLAZER, with ethyl lactate and obtained a yellow oil. She testified that she had earlier prepared the acid chloride analog (HGW 72:58) by reacting BLAZER acid [FN2] with oxalyl chloride and had recorded its preparation on page 58 of her laboratory notebook number 72. She testified that the ethyl lactate used by her was a commercial product. The yellow oil was the desired compound and she confirmed its structure by an IR scan. The encoding group later assigned the compound the number RH 43360. JR 214, 215, 218, 219, 222 to 225, 232 to 254, 272, 273, 410, 411, 417 and 434 to 438; JX 3.
Mrs. Weber performed the gas liquid chromatograph (GLC) of the yellow oil (the final product) and the GLC revealed the presence of two esters, the first (an impurity) eluting at 260<<degrees>> C and the second (the desired compound RH 43360) eluting at 290<<degrees>> C. The impurity was present in an amount of 26% and was believed to be the ethyl ester of BLAZER, previously encoded as RH 38817. This ester was formed by the undesired reaction of ethyl alcohol and the starting material (HGW 72:58), the acid chloride analog of BLAZER. Ethyl alcohol resulted from the hydrolysis of ethyl lactate, which is relatively unstable, to form ethyl alcohol and lactic acid. A sample of the final product containing the 26% impurity was forwarded to the herbicide screening group where it was subjected to a two week primary screening carried out under the supervision of Kollman. By October 15, 1975, the results showed high activity against a wide spectrum of plants. JR 40, 46 to 51, 56, 57, 423 to 426, 432, 442 to 444, 569 to 576, 644, 647, 648 and 651 to 655; JX 3 and 10 to 12.
*5 By this time, Dr. Swithenbank had replaced Dr. Johnson and had assumed responsibility for the herbicide synthesis group. Noting the outstanding herbicidal activity of RH 43360, Dr. Swithenbank recommended that the compound be subjected to field testing in order to get an accurate assessment of its commercial potential. He instructed Dr. Taylor [FN3], a Ph.D. chemist reporting to him, to prepare a large sample of RH 43360 for field testing. Dr. Swithenbank testified that he was familiar with Dr. Taylor's capabilities and work habits and that he considered Dr. Taylor to be a competent chemist. On January 28, 1976, Dr. Taylor employed the same synthetic procedure as Mrs. Weber had utilized and as in Weber's experiment, the reaction produced significant amounts of the BLAZER ester (RH 38817), whose high herbicidal activity could mask that of RH 43360. Since RH 43360 could not be obtained in a large enough quantity in pure form, a decision was made not to field test RH 43360. JR 859 to 874, 888, 1018 and 1019; JX 4 and 24.
Dr. Swithenbank was still interested in RH 43360 so he directed Dr. Taylor to prepare a pure sample of the compound. On February 3, 1976, Dr. Taylor started the preparation of the compound employing the same synthetic procedure as Mrs. Weber and obtained 5.48 grams of a yellow oil as the reaction product which, according to the GLC, contained about 80% RH 43360 and 20% of the undesired ethyl ester of BLAZER (RH 38817). Dr. Swithenbank asked Dr. Taylor to purify the sample of RH 43360 by column chromatography. Dr. Taylor did the column chromatography and obtained 640 milligrams of pure RH 43360 as shown by the second GLC. JR 876 to 886; JX 4.
A sample of the purified compound RH 43360 was sent to Kollman's herbicidal screening group where it underwent screening tests under Kollman's supervision. By February 27, 1976, it was determined that the compound possessed a high level of herbicidal activity against a variety of weed species. JR 68 to 74; JX 13.
Opinion re: Johnson's case
We hold that the Johnson record establishes by a preponderance of the evidence actual reduction to practice of the invention of the count in issue by February 27, 1976.
To constitute an actual reduction to practice, it must be shown that an experiment satisfies all the limitations of the count in issue. Szekely v. Metcalf, 455 F.2d 1393, 173 USPQ 116 (CCPA 1972); Schur v. Muller, 372 F.2d 546, 152 USPQ 605 (CCPA 1967). The invention of a compound is not complete unless its utility is established by proper tests. Blicke v. Treves, 241 F.2d 718, 112 USPQ 472 (CCPA 1957). Where the count does not state any utility, any utility is sufficient to establish actual reduction to practice.
We agree with Johnson that by February 27, 1976 his record establishes reduction to practice. By that time, a pure sample of 1-(ethoxycarbonyl)ethyl 5-(2-chloro-4-trifluoromethyl phenoxy)-5-nitrobenzoate, a compound falling within the scope of the count, was successfully tested as a herbicide. We also agree with Johnson that his record establishes that the experiment commenced by Dr. Taylor on February 3, 1976 resulted in the obtention of a pure sample of the compound. Dr. Taylor employed the same synthetic procedure as Mrs. Weber had previously performed in May 1975 and as he had previously performed in January 1976 and this procedure resulted in the obtention of a yellow oil containing RH 43360, 1-(ethoxy-carbonyl) ethyl 5-(2-chloro-4-trifluoromethyl phenoxy)-5-nitrobenzoate, contaminated with about 26% of BLAZER ethyl ester (RH 38817). On the record before us, we agree with Johnson that it is more probable than not that the yellow oil was properly characterized. In this regard, Mrs. Weber had previously confirmed the structure of the desired compound by an IR scan, which has since been lost, that following her synthetic route resulted in a mixture of two esters (one being the desired compound and the other being the BLAZER ethyl ester), that the presence of two esters was confirmed by GLC, and that the chemistry of the reaction of ethyl lactate with the acid chloride of BLAZER is "straightforward and uncontroversial" as note page 6 of Grove's reply brief.
*6 We do not agree with Grove's position on pages 15 to 17 of his main brief that the evidence does not establish that the compound RH 43360 has the structure set forth, because Dr. Taylor failed to analyze the resulting product. In support of this position, Grove points to the testimony of his rebuttal witness, Dr. Van Gemert, who testified at pages 826, 827, and 842 to 845 of Grove's record to the effect that a gas chromatograph does not analyze for structure, that it simply will show the number of components, and that carboxylic acids and their salts do not normally elute from a gas chromatograph. On page 11 of his reply brief, Grove points to page 27 of JX 4, stating that on this page the code designation appears to have been written over, making it unclear whether the exhibit refers to RH 45360 or RH 43360. Grove also contends that the source of the ethyl lactate is not given, nor did Swithenbank testify as to its source.
As we noted earlier, the burden of proof is by a preponderance of the evidence. Is it more probable than not that RH 43360 has the structure set forth by the Johnson record? Cf. Photis v. Lunkenheimer, 225 USPQ 948 (Bd.Pat.Int.1984). In our view, the Johnson record establishes by a preponderance of the evidence the structure for RH 43360. In Young v. Bullit, 233 F.2d 347, 351, 110 USPQ 55, 58 (CCPA 1956), the Court held that ...
a complete chemical analysis is not always necessary to identify a product but that various other factors, including the materials used, the procedures followed, and the skill and experience of the experimenters, are to be considered.
The question generally is whether, when all the circumstances are considered together, there is a reasonable certainty as to the identity of the product. Proof beyond a reasonable doubt is not necessary where, as here, the applications of the parties were copending.
Here, we agree with Johnson that a complete chemical analysis is not necessary because other factors are present. Dr. Taylor is a competent Ph.D. chemist. He utilized standard materials (ones earlier prepared and characterized or commercially available) and we have no reason to doubt that he obtained his materials from the same source as Mrs. Weber had. He repeated the same synthesis procedure developed by Dr. Johnson and utilized by Mrs. Weber, a procedure which is straightforward and uncontroversial and essentially the same one used by Grove in his reduction to practice.
On pages 17 to 20 of the brief, Grove urges that Johnson abandoned, suppressed or concealed the invention because of the lack of any activity with respect to RH 43360 for more than three years from February 1976 up to the spring of 1979. We will not consider this issue because it was not timely raised via a notice under 37 CFR 1.632. Holub v. Robeson, 8 U.S.P.Q.2d 1440 (Comr.1988). A review of the interference file shows that the EIC issued an order (Paper No. 99) dismissing Grove's notice under 37 CFR 1.632 as being untimely filed and a panel of this Board in its decision of April 10, 1990 (Paper No. 102) denied Grove's request for reconsideration of the EIC's order. In accordance with 37 CFR 1.655(a), Grove could have requested that we review the EIC's order, but Grove did not do so in his main brief [FN4].
*7 For the foregoing reasons, we hold that Johnson has established actual reduction to practice by February 27, 1976.
Johnson's Remaining Case for Priority and his Motion to Suppress
In view of our holding that Johnson established an actual reduction to practice with the preparation and successful testing of RH 43360, we need not consider the subsequent actual reduction to practice relied upon by Johnson with respect to the preparation and testing of the compound, RH 48675. Nor need we consider Johnson's motion (Paper No. 85) to suppress Grove's rebuttal evidence, i.e., the testimony of Dr. Van Gemert with respect to Johnson exhibits (JX 5, 22, 23 and 25), or Johnson's alternative motion for surrebuttal. The motion and alternative motion are directed to matters presented in rebuttal by Grove with respect to the compound, RH 48675.
Johnson's Preliminary Motion to Redefine
Grove's main brief requests that we review the Decision on Preliminary Motions, granting Johnson's preliminary motion to redefine the interfering subject matter by substituting count 2 for count 1. Grove opposed the motion on the ground that count 2 included unpatentable species. Former count 1 is directed to the compound, RH 43360, the compound actually reduced to practice by Johnson. Whether the issue of this interference should be count 1 or count 2 is moot since Johnson would have prevailed on count 1 if it were the issue of this interference.
Grove's Priority Case
Since Grove does not allege a date of invention prior to February 27, 1976, he cannot prevail in this proceeding. Accordingly, we need not consider Grove's priority case.
ISSUES REMAINING BEFORE US
Grove's Preliminary Motion for Judgment
Grove's main brief requests that we review the Decision on Preliminary Motions denying his preliminary motion for judgment against Johnson. The motion urges that Johnson is not entitled to the benefit of his parent application, Serial No. 104,598, filed December 19, 1984 and that if Johnson is not entitled to its benefit, his claims corresponding to the count are unpatentable under 35 U.S.C. 102(b) over Johnson's published European patent application and Grove's published British patent application. The motion contends that since the involved Johnson application was not filed before the termination of proceedings on Johnson's parent '598 application, the involved application was not copending with its parent and is not entitled to its benefit.
We have reviewed the motion and the EIC's decision and find that we agree with the EIC that Johnson is entitled to the benefit of his parent application. The involved Johnson application was filed before the termination of proceedings on Johnson's '598 application.
Benefit of an earlier filing date in the United States is governed by 35 U.S.C. 120, which reads, in pertinent part, as follows:
*8 An application for a patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application.... [Emphasis added.]
The facts show that the Board of Appeals (now the Board of Patent Appeals and Interferences) affirmed the final rejection of all of the appealed claims in the Johnson '598 application and adhered to its decision on reconsideration. The time for filing a notice of appeal to the Court of Appeals for the Federal Circuit was set to expire on November 30, 1984. On December 10, 1984, Johnson filed a petition for a one-month extension of time and requested a retroactive extension of time "in which to file a Notice of Appeal to the CAFC." The petition for extension was granted and accordingly the time for filing a notice of appeal was extended to expire on December 30, 1984. No appeal was filed. The proceedings, therefore, terminated on December 30, 1984, the date that the time for appeal expired. 37 CFR 1.197(c).
The involved Johnson application was filed on December 19, 1984, which is prior to the December 30, 1984 date for filing the appeal in the '598 application. Consequently, Johnson is entitled to the benefit of the '598 application, because the involved application was filed prior to the expiration of proceedings on the '598 application. We do not agree with Grove that Johnson somehow limited the options available to him by requesting an extension of the time for filing a notice of appeal. It is Grove's position that during the extended period Johnson could only have filed a notice of appeal and that the filing of a continuation application was not authorized. Nowhere has Grove cited any authority for his position. Nor are we aware of any. In our view, during the extended period Johnson was entitled to file his continuation application prior to the termination of proceedings in his parent application.
For the foregoing reasons, we hold that Johnson was properly accorded the benefit of his parent application, Serial No. 104,598 and that the EIC properly denied Grove's motion for judgment.
Judgment as to the subject matter of the count is hereby awarded to Wayne O. Johnson, the senior party.
Accordingly, on the present record, Grove is not entitled to a patent containing his claims 10 to 12, 14 and 20 corresponding to the count; and
Johnson is entitled to a patent containing his claims 8 and 42 corresponding to the count.
In the Initial Interference Memorandum, the primary examiner indicated that claims 3, 4, 12, 14, 15, 17, 19, 23, 25 to 27, 32, and 34 to 41 corresponding to the count were unpatentable. The question of the patentability of these claims was not raised in this proceeding. Accordingly, we take no position on Johnson's entitlement to these claims and refer the matter to the Primary Examiner for appropriate action.
BOARD OF PATENT APPEALS AND INTERFERENCES
Ronald H. Smith
andrew H. Metz
FN1. The parties stipulated the testimony of five witnesses.
FN2. This has essentially the same chemical structure as BLAZER set forth previously except that hydrogen is substituted for sodium.
FN3. The parties stipulated that Dr. Taylor, if called, would testify that JX 4 consists of (1) copies of pages from his laboratory notebook in which he regularly made entries reflecting the work he did during the times indicated and (2) copies of IR spectra which he made. JR 1018 and 1019.
FN4. Footnote 5 of Grove's reply brief states that Grove takes "strong exception" to the PTO's ruling that Grove is foreclosed from arguing this issue.
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