Application of Raymond G. Wilkinson and James H. Boothe

304 F.2d 673, 50 C.C.P.A. 701

• Court: Court of Customs and Patent Appeals
• Decided: July 11, 1962
• Docket: Patent Appeal 6723
• Status: Published

Opinions

WORLEY, Chief Judge.

Appellants applied for a patent on "Nitriles of the Tetraclines"¹ in February 1955. The examiner rejected the application on the single reference Stephens et al., an article disclosing the preparation and identification of the claimed compound, which was published in a scientific journal in July 1954.

Appellants attempted to overcome the rejection by filing affidavits pursuant to the provisions of Rule 131, 35 U.S.C.A. Appendix.² In holding those affidavits insufficient to overcome the reference, the examiner stated that they “lacked the essential element of utility which is necessary for the reduction of the invention to practice and thus a completion thereof.” In affirming, the board said:

“We agree with the examiner’s position that in order to overcome the reference, it was necessary for the appellants herein to show complete reduction to practice of the invention and particularly to show the utilization of the compound. * * ”

Summarizing the facts of record as we understand them, we have the following situation:

1. The Stephens publication discloses the claimed compound and its identification. It does not allege a use for the compound, it does not show a use, nor is any use alleged to be obvious.

2. Appellants’ affidavits prove that appellants had made and identified the claimed compound prior to the publication date of the Stephens reference. The affidavits do not allege a use for the compound, they do not show a use, nor is any use alleged to be obvious.

3. The legal adequacy of the present application for a patent on the compound is not questioned.

Since the Stephens reference does not allege or disclose a use, nor is a use alleged to be obvious, the issue is whether, under such circumstances, appellant can properly be required to show an actual reduction to practice, including a showing of use, to overcome the reference. In other words, if Stephens shows A, can appellant be compelled to show A plus B before he can overcome Stephens? We do not think so, nor do we find any authority for such a requirement in the cases relied on below.³

We acknowledge the varying degrees of relevance of the cases cited below, as well as by opposing counsel here, but find none, including In re Stempel, 241 F.2d 755, 44 CCPA 820, sufficiently in point with the precise fact situation at bar to be controlling.

Since appellants have satisfactorily shown they did everything done by Stephens prior to the latter’s publication date, they have overcome Stephens as a valid ground of rejection. Thus, we are obliged to reverse the decision appealed from.

Reversed.

MARTIN, Judge, concurs in result only.

1 . Since the issue here is one of law, a technical description of the compound is unnecessary.

2 . “131. Affidavit of prior invention to overcome cited patent or publication.

(a) When any claim of an application is rejected on reference to a domestic patent which substantially shows or describes but does not claim the rejected invention, or on reference to a foreign patent or to a printed publication, and the applicant shall make oath to facts showing a completion of the invention in this country before the filing date of the application on which the domestic patent issued, or before the date of the foreign patent, or before the date of the printed publication, then the patent or publication cited shall not bar the grant of a patent to the applicant, unless the date of such patent or printed publication be more than one year prior to the date on which the application was filed in this country, (b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photographic or photostatic copies thereof, must accompany and form part of the affidavit or their absence satisfactorily explained.”

3 . During the proceedings below the examiner and board cited the following:

Conner v. Joris, 241 F.2d 944, 44 CCPA 772; Smith v. Bousquet, 111 F.2d 157, 27 CCPA 1136; Townsend v. Smith, 36 F.2d 292, 17 CCPA 647; Larsen v. Marzall, 90 U.S.App.D.C. 260, 195 F.2d 200; Knutson et al. v. Gallsworthy et al., 82 U.S.App.D.C. 304, 164 F.2d 497; Ex parte Buc et al., 114 USPQ 552 (Bd.App.1957); Collins v. Trumpler, 105 USPQ 341 (Bd. Pat.Inter.1954); Ex parte Fryling et al., 1957 C.D. 43 (Bd.App.1954); Ex parte Grosselin, 1901 C.D. 248.