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Archer v. Gordon

427 F.2d 1402, 57 C.C.P.A. 1346
CourtCourt of Customs and Patent Appeals
DecidedJuly 9, 1970
DocketNo. 8116; No. 8117
StatusPublished
Cited by1 cases

This text of 427 F.2d 1402 (Archer v. Gordon) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Archer v. Gordon, 427 F.2d 1402, 57 C.C.P.A. 1346 (ccpa 1970).

Opinion

Kich, Judge,

delivered the opinion of the court:

These combined appeals are from the decision of the Board of [1347]*1347Patent Interferences1 awarding priority to Freter and Zeile (hereinafter “Freter”) in a three-party interference, No. 91,986, involving Freter application serial No. 62,099, filed October 12, 1960, entitled “Derivatives of 6,7-Benzomorphan”; Gordon and Lafferty (hereinafter “Gordon”) application serial No. 13,982 filed March 10, 1960, entitled “Novel N-Allyl and N-Propargyl Benzmorphan Derivatives”; and Archer application serial No. 72,844 filed December 1, 1960, entitled “Compounds and Preparation Thereof.”2

The Counts

The two counts of the interference are:

1. The compound of the formula
in which B is a- member of the group consisting of -OH2jOH='CH2 [allyl] and -CHa-CssCH [propargyl].
2. The compound of the formula
in which B' is a member of the group consisting of hydrogen and methyl; and B is a member of the group consisting of -OH2-OH=OH2 and -CH2-C = CH.

The compounds of the counts are N-allyl and N-propargyl1 5,9-dimethyl-6,7-benzomorphan derivatives. Count 1 is directed to 2'-hydroxy compounds while count 2 is generic both to the 2'-hydroxy compounds and to 2/-methoxy compounds. The compounds of the [1348]*1348counts are disclosed by each, of the parties as being useful as antagonists 3 of analgesics (narcotics).

Summary of the Case

The sole issue in this interference is priority of invention. Since the applications of all three parties are copending, the applicable burden of proof on the junior and intermediate parties is by a preponderance of the evidence.

Freter took no testimony, and relied on a German priority date (35 USC 119) of October 16,1959. It is not disputed that Freter was properly accorded the benefit of that date and therefore made senior party. Thus October 16,1959,4 is the date which must be overcome by either Gordon or Archer to prevail over Freter.

Gordon and Archer each filed a main brief and a reply brief and each was represented at oral argument. Freter, however, has relied solely on the opinion and decision of the board.

The Oase for Gordon

Gordon took extensive testimony and submitted numerous documentary exhibits in an attempt to prove (1) a reduction to practice of 2'-TOe¿7iOí»y-5,9-dimethyl-2-«iiyi-6,7-benzomorphan prior to October 16 and (2) conception of 2'-hydroxy-5,9-dimeth.yl-2-aUyl-Q,l7-benzomorphan prior to October 16 coupled by diligence with both actual and constructive reductions to practice after that date. The structures of these two compounds are represented by the formula in count 2, supra, when B is “allyl” and B' is “methyl” and “hydrogen,” respectively.

The board held that a reduction to practice of the 2'-methoxy compound had not been established, and Gordon does not- seek to have us review that holding. As for the 2'-hydroxy compound,5 the board held that Gordon’s diligence towards its reduction to practice did not begin until October 22, after the critical date.

The record shows that probably as early as May of 1959, Gordon had conceived of the structure of the 2'-hydroxy compound, had conceived of its usefulness as an analgesic antagonist, and had conceived of two [1349]*1349synthetic routes for producing it. These two routes, which involve the use of the same starting material, are represented by the following schematic, italicization indicating the moiety introduced by each process step:

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Related

Sydney Archer v. Maxwell Gordon and John J. Lafferty v. Kuhrt Freter and Karl Zeile, Maxwell Gordon and John J. Lafferty v. Sydney Archer v. Kuhrt Freter and Karl Zeile
427 F.2d 1402 (Customs and Patent Appeals, 1970)

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Bluebook (online)
427 F.2d 1402, 57 C.C.P.A. 1346, Counsel Stack Legal Research, https://law.counselstack.com/opinion/archer-v-gordon-ccpa-1970.