Rey-Bellet v. Engelhardt

493 F.2d 1380
CourtCourt of Customs and Patent Appeals
DecidedApril 4, 1974
DocketPatent Appeal Nos. 8998, 8999
StatusPublished
Cited by20 cases

This text of 493 F.2d 1380 (Rey-Bellet v. Engelhardt) 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
Rey-Bellet v. Engelhardt, 493 F.2d 1380 (ccpa 1974).

Opinion

BALDWIN, Judge.

These appeals are from the decision of the Patent Office Board of Patent Interferences awarding priority of invention of the sole count in issue to Schindler, the senior party of this three party interference.1 We reverse the board’s decision and hold that priority should have been awarded to £he party Engel-hardt.

The Appeals

Schindler is involved in these appeals on application serial No. 282,874, filed May 24, 1963, as a continuation-in-part of application serial No. 179,482, filed March 13, 1962. Schindler claimed and [1382]*1382was accorded the benefit under 35 U.S.C. § 119 of two Swiss applications. The earliest of these, Swiss No. 3054/61, had a filing date of March 14, 1961. This date became his date of invention for the purpose of the interference contest conducted below.

Appeal No. 8998 is the appeal of the party Rey-Bellet et al. (Rey-Bellet) involved on application serial No. 463,345, filed June 11, 1965, as a continuation-in-part of application serial No. 170,787, filed February 2, 1962. Rey-Bellet claimed and was accorded the benefit of two earlier Swiss applications, the earliest of which, Swiss No. 11,063/61, had a filing date of September 22, 1961. Rey-Bellet also claimed the benefit of an even earlier Swiss application, Swiss No. 1467/61, filed February 8, 1961. However, the board held that this application failed to satisfy the requirements of the first paragraph of 35 U.S.C. § 112 and could not, therefore, be the basis of a claim for priority purposes made under § 119. Accordingly, Rey-Bellet was restricted to the September 22, 1961, filing date of Swiss No. 11,063/61 for a date of invention.

Appeal No. 8999 is the appeal of the party Engelhardt involved in serial No. 297,710, filed July 25, 1963. Engelhardt was accorded the benefit of an earlier filed U.S. application, serial No. 120,835, filed May 24, 1961, but alleged an even earlier conception and actual reduction to practice. In the alternative, Engel-hardt alleged diligence between the conception and the 1961 filing date. However, the board held these allegations not to have been proven and restricted En-gelhardt to the May 24, 1961, filing for date of invention.

Having concluded that neither Rey-Bellet nor Engelhardt had proven dates of invention earlier than March 14, 1961, the board awarded priority to Schindler.

The Subject Matter

The sole count of this interference is directed to a chemical compound and reads as follows:

5-( 3-methylaminopropylidene) diben-zo-[a, d]-cyclohepta [1, 4] diene.

The parties to these appeals refer to this compound by a less cumbersome name, nortriptyline, which is usually abbreviated to NTL. Nortriptyline (hereinafter NTL) is an antidepressant compound at moderate dosage levels, but acts as a tranquilizer at higher dosage levels. It has the following chemical structure:

OPINION

From the posture of the parties to these appeals, Engelhardt would legally be entitled to priority over Schindler in either of two circumstances. He can prove either that he made an actual reduction to practice of the invention before March 14, 1961, the unchallenged date of invention accorded Schindler by the board, or that he conceived the invention before that date and was diligent from a point in time before that date to a subsequent actual or constructive reduction to practice. In fact, En-gelhardt argues that he has satisfied his burden of proof relative to either circumstance, although he principally relies on the allegation that he completed an actual reduction to practice prior to Schindler’s date of invention.

The Alleged Actual Reductions to Practice

It is undisputed that the compound corresponding to the count had been prepared in this country by Engelhardt no later than December of 1960, while employed at the Merck, Sharp and Dohme Research Laboratories (Merck). Accordingly, all that remained for an ac[1383]*1383tual reduction to practice was the establishment of a practical utility. See, e. g., Anderson v. Natta, 480 F.2d 1392 (Cust. & Pat.App., 1973) and Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957). Since the count contains no limitation related to any utility, evidence which would establish a substantial utility for any purpose is sufficient to show its reduction to practice. Campbell v. Wettstein, 476 F.2d 642 (CCPA 1973).

Engelhardt urges that the satisfaction of these legal tests can be found in the results of each of three tests carried out at Merck on laboratory animals. All of these tests were made at Merck by personnel other than the inventor.

The earliest of these tests, the Mental Health General Screening Test, was accomplished in December of 1960. This test is carried out by administering a candidate drug to mice intraperitoneally at differing dosage levels. This test is not designed to detect any specific property of a drug. Instead a number of physical responses of the test animal to the drug are observed. These responses, and for that matter the absence of a response, can be indicative of the presence or absence of a desirable pharmacological property in the drug. The test also gives an indication of the toxicity of the drug.

The second of these tests is known at Merck as the Tetrabenazine Antagonism Test. Again, the test animals are mice. In-this test the candidate drug is first administered to the animal followed by a later administration of tetrabenazine. Tetrabenazine is a tranquilizer.

The purpose of the test is to screen candidate drugs for antidepressant activity. The detection of antidepressant activity in a drug using test animals is particularly difficult since the animal is not depressed. The role of tetrabena-zine is to chemically simulate depression in the mouse through its tranquilizing effect. To the extent that the candidate drug offsets the tranquilizing effect of tetrabenazine it is said to be an “antagonist” of this effect. Typically a successful test is indicated when the test animal remains active after the sequential administration of the “antagonist” and tetrabenazine. NTL was screened using this test on March 10 and March 29, 1961.

At the time this test was used on NTL at Merck, it was newly developed. However, a similar test using a different drug to simulate depression was under investigation at the National Institutes of Health.

The third test, a so called Sidman Avoidance Test, was made on March 14, 1961. The purpose of this test is to screen drugs for tranquilizing activity. The test animals are squirrel monkeys. The test is carried out by placing the monkey in a cage having a grid floor which is wired to produce a shock every eight seconds. The monkey is trained to avoid shock by pressing a lever which delays the shock for 48 seconds. The average monkey has a high rate of avoidance of shock. However, if the monkey is tranquilized he becomes indifferent to the consequences of being shocked and more likely to fail to press the lever.

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