Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE AKIHIRO YAMAGUCHI, RYUICHI MITA, TOSHIO KATOH, MASAHARU OHOKA
AND CHOJIRO HIGUCHI
Appeal No. 87-0829
November 25, 1987
Application for Patent filed February 11, 1984, Serial No. 582,566. Single-Crystal DL-Cysteine and Process for Producing Same.
Paul Grandinetti et al. for appellants
Primary Examiner--Michael L. Shippen
Before Milestone, Torchin and Downey
This is an appeal from the final rejection of claim 1, the only claim remaining in the application.
The subject matter on appeal relates to a single-crystal DL-cysteine characterized by an X-ray diffraction spectrum. Illustrative claim 1 is reproduced as follows:
1. Single-crystal DL-cysteine characterized by an X-ray diffraction spectrum in which intense diffracted rays appear at the following lattice spacings:
Lattice Spacing (A) Relative Intensity (I)
where, in the column of the relative intensity (I), f means that the spectral intensity is high and ff means that the spectral intensity is very high.
The reference relied upon by the examiner is:
Nippon (Japanese Patent Appl.) 57-154164 Sep. 22, 1982
Claim 1 stands rejected under 35 USC 102(a) and (b) as being anticipated by Nippon. After giving careful consideration to the opposing arguments presented by appellants and the examiner, we find ourselves in substantial agreement with the examiner's position that appellants' earlier filed Japanese application 522 75/82 , filed more than 12 months prior to the filing date of PCT/JP 83/00241 , defeats appellants' priority rights under 35 USC 119. This finding is dispositive of the issues of this case by virtue of the fact that Nippon has not been effectively removed as a reference under 35 USC 102(a) inasmuch as no evidence of prior inventorship in this country is presented. See 37 CFR 1.131. We therefore find it unnecessary to reach the issue of whether Nippon is properly applied under 35 USC 102(b). Accordingly, we will affirm the examiner's rejection under 35 USC 102(a) for the reasons set forth in his answer and add the following comments for emphasis.
*2 Appellants filed a United States national application, Serial No. 582,566, on February 11, 1984. Under 35 USC 365(a), this national application 'shall be entitled to the right of priority based on a prior filed international application,' that is, appellants' PCT/JP 83/00241 , filed July 26, 1983. Likewise, under 35 USC 365(b), appellants' PCT/JP 83/00241 , designating the United States, 'shall be entitled to the right of priority based on a prior foreign application.' PCT/JP 83/00241 requested benefit of Japanese application 13109 5/82 (JP 13109 5/82 ) filed July 29, 1982. The national application in its oath also requested benefit under 35 USC 119 of JP 13109 5/82 and acknowledged the filing of Japanese applications 131 062/82 (JP 131 062/82 ) and 522 75/82 (JP 522 75/82 ) filed on July 19, 1983 and April 1, 1982, respectively.
During the prosecution of Serial No. 582,566, the examiner cited and applied Nippon under 35 USC 102(a) and (b), stating that the reference disclosed the instant claimed crystalline product. The examiner denied appellants benefit of JP 13109 5/82 in view of their earlier application JP 522 75/82 , filed more than 12 months prior to the filing date of the PCT application, which earlier filed application the examiner asserts was the 'first filed' foreign priority document containing the subject matter of the present application.
It is appellants' position that Nippon is not an effective reference since it was published after the filing date of their foreign priority document, JP 13109 5/82 of which appellants claim benefit. Appellants contend that the examiner erred in denying priority of JP 13109 5/82 under 35 USC 119 since the earlier filed application JP 522 75/82 provides no disclosure of the structure of the crystals, whereas JP 13109 5/82 provides details regarding the structural characteristics of the crystal by the additional disclosure of its X-ray diffraction spectrum.
Appellants' brief does not question that Nippon discloses the claimed crystalline product; rather all arguments are directed to the removal of Nippon as an effective reference based upon their obtaining benefit of JP 13109 5/82 . We have reviewed the record and it is clear to us that Nippon does indeed disclose the claimed crystalline product. Consequently, the dispositive issue in this appeal involves whether appellants are entitled to benefit of JP 13109 5/82 , thereby overcoming Nippon as a reference.
In order to resolve this issue, it is appropriate to analyze 35 USC 119 [FN1] and its requirements, in particular the meaning of 'application for patent for the same invention.' For a most recent discussion of such expression, see Olson v. Julia, 209 USPQ 159 (PTO Bd.Pat.Inter. 1979). The Board of Patent Interferences, one of our predecessor boards, in resolving a similar benefit issue, thoroughly analyzed 35 USC 119, its legislative history in relation to the Convention of Paris for the Protection of Industrial Property of 20th March 1883, and other relevant decisions on this aspect, including Nelson v. Wolf, 25 CCPA 1290, 97 F.2d 632, 38 USPQ 137 (1938) and Lorenz K. Braren v. George Horner, 18 CCPA 971, 47 F.2d 358, 8 USPQ 455 (1931). As explained by the Board in Olson at page 162, the expression 'application for a patent for the same invention' means that the claimed invention of the application seeking benefit need only be disclosed in the benefit application in order to obtain priority under the statute. In addition, McCrady, Patent Office Practice, Section 50, page 77 (4th ed. 1959), noting that some countries such as France do not use formal claims, confirms that the disclosure, not the claims in the foreign application, is the basis for determining priority right. See Prescott v. Michelin, 57 App.D.C. 104, 17 F.2d 863 (1927). Olson also states that in order for the foreign application to provide benefit, the disclosure of the foreign application must comply with the first paragraph of 35 USC 112 in the same manner as with a United States application seeking benefit under § 120, citing Kawai v. Metlesies, 480 F.2d 880, 178 USPQ 158 (CCPA 1973).
*3 Thus, an applicant for a patent can claim priority as of the date of his foreign application for a patent on the same invention if the disclosure of the benefit application discloses the subject matter of the claimed invention under consideration and is in compliance with the first paragraph of 35 USC 112. However, 35 USC 119 additionally requires that an applicant for patent can claim priority as of the date of his foreign application for patent on the same invention only if it was the first foreign application filed and was filed not more than 12 months prior to the filing of his United States application. Cf. Ahrens v. Gray, 1931 C.D. 9 (PTO Bd.App.1929).
Our review of JP 522 75/82 would indicate that this foreign application, which claiming the process of making DL-cysteine, does in fact disclose the DL-cysteine product, its crystalline nature and its use in the preparation of permanent wave solutions and in the manufacture of drugs. Thus, JP 522 75/82 , being the first filed application by appellants disclosing the claimed invention under consideration and being filed more than 12 months prior to the filing of their PCT application, defeats appellants' priority rights under 35 USC 119.
Appellants admit that JP 522 75/82 discloses an end product of the process as being DL-cysteine crystals, which are described as flaky or short needle-like crystals and have good storage stability. However, they urge that such disclosure is insufficient to identify the novel crystalline DL-cysteine of the application of the present invention because the disclosure fails to describe the structure of the crystalline product in terms of its X-ray diffraction spectrum. They argue that such additional subject matter, the X-ray diffraction spectrum, entitles them to benefit of JP 13109 5/82 since this would be the first foreign application for that subject matter. We find such argument nonpersuasive. The claimed invention under consideration here is drawn to a compound, i.e., a single crystal DL-cysteine. 35 USC 119 requires only that the invention be disclosed in the benefit application in such a manner as to comply with the first paragraph of § 112 and be the same invention as that disclosed in the later application. It does not require that the claimed invention be described in the same way, that is, in ipsis verbis to satisfy the description requirement. In re Lukach, 58 CCPA 1233, 442 F.2d 967, 169 USPQ 795 (1971). We find it sufficient that the disclosure of JP 522 75/82 is in compliance with the first paragraph of 35 USC 112 disclosing the same DL-cysteine compound claimed in the instant application. No evidence to the contrary has been offered by appellants. [FN2] Moreover, it is well settled that from a standpoint of patent law, a compound and all of its properties are inseparable. They are one and the same. In re Papesch, 50 CCPA 1084, 315 F.2d 381, 137 USPQ 43 (1963). In our view, the X-ray diffraction spectrum, like the graphic formulae, the chemical nomenclature, etc., is merely a symbol by which the compounds can be identified, classified and compared. These symbols, used to identify, do not define a separate invention from the compound disclosed in JP 522 75/82.
*4 We conclude that JP 522 75/82 , which application was not withdrawn, abandoned or otherwise disposed of as required by 35 USC 119, third paragraph, but was published October 7, 1983 as JP 170751, defeats appellants' priority rights under 35 USC 119. Accordingly, the Nippon reference, having a publication date prior to the filing of the U.S. application, is an effective reference under 35 USC 102. For the reasons given above and those given in the examiner's answer, the decision of the examiner is affirmed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Gordon K. Milestone
Norman G. Torchin
Mary F. Downey
FN1. The pertinent part of 35 USC 119 states that:
An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed . . .
FN2. Arguments in a brief cannot take the place of evidence properly adduced. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Cole, 362 F.2d 769, 140 USPQ 230 (CCPA 1964).
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