author: ALMOND, Senior Judge.

text:
    YASUKO KAWAI et al., Appellants, v. Werner METLESICS and Leo Henry K. Stembach, Appellees, Application of Alan Hodgson LAIRD and John Selwyn Morley. Application of Paul Martin HARDY et al. (two cases).
    Patent Appeal Nos. 8774, 8838-8840.
    United States Court of Customs and Patent Appeals.
    June 21, 1973.

      John T. Fedigan, John T. Miller, Wenderoth, Lind & Ponack, Washington, D. C., attorneys of record for appellants.
    Hugh A. Chapin, New York City, attorney of record for appellees. Samuel L. Welt, Nutley, N. J., William H. Epstein, Bernard S. Leon, Nutley, N. J., Hoffmann-La Roche Inc., Paul H. Heller, Laurence H. Pretty, Kenyon & Kenyon Reilly, Carr & Chapin, New York City, of counsel.
    Paul N. Kokulis, Washington, D. C., Cushman, Darby & Cushman, Washington, D. C., attorneys of record, for Alan Hodgson Laird and Paul Martin Hardy. Lawrence A. Hymo, Edgar H. Martin, Fred S. Whisenhunt, Jr., William T. Bullinger, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

These are four appeals from decisions of the Patent Office Board of Appeals and the Patent Office Board of Interferences. The outcome in these appeals, three from the Board of Appeals and one from the Board of Interferences, will in each case be determined by the answer to a question of law common to all four. That question is whether an application for patent filed in a foreign country must contain a disclosure of an invention adequate to satisfy the requirements of the first paragraph of 35 U.S.C. § 112 if a later filed United States application claiming that invention is to be accorded the benefit of the filing date of the foreign application as allowed by 35 U.S.C. § 119.

In each of these appeals, the board involved concluded that the foreign application must satisfy the requirements of section 112 if it is to be the basis of a claim for priority under section 119. We affirm those decisions.

Background to Appeals Nos. 8838, 8839, 8840

These appeals from decisions of the Patent Office Board of Appeals involve three commonly assigned applications. In each of these cases, filed by British inventors, all of the claims in question, which were directed to chemical compounds per se, were rejected by the examiner as unpatentable under 35 U.S.C. § 102(a) or 35 U.S.C. § 103. The rejections were made in view of references which appeared in the literature and had effective dates prior to the date on which the applications in question were filed in the United States.

In order to avoid the effect of these references, appellants sought to obtain for their United States applications the benefit of the earlier filing dates of certain British provisional specifications. The filing dates of the latter antedated the publication dates of the references in question. Therefore, if the United States applications were accorded the benefit of the filing dates of the British provisional specifications, these references would not be prior art under sections 102(a) or 103. Appellants apparently agree that the rejections would be proper if the references can be regarded as prior art since the articles describe the same research efforts which lie behind the applications involved in these appeals.

The examiner refused to accord the United States applications the benefit of the filing dates of the earlier British applications. The basis for this refusal was his determination that the British provisional specifications were not adequate to meet the disclosure requirements found in the first paragraph of section 112. More specifically, the examiner had this to say:

The disclosure of utility * * * is not deemed to be sufficient to comply with the disclosure requirements for U.S. applications mandated by 35 U. S.C. 112. That a foreign application must comply with 35 U.S.C. 112 to be entitled to the benefit of the foreign filing date for the purpose of overcoming a reference is set forth in M. P.E.P. 201.15 which reads: “The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 * *

The board sustained the examiner on this point and appellants’ attorney conceded at oral argument before this court that the British provisional specifications would not satisfy, if applicable, the requirements of section 112. Therefore, in these appeals the only issue before this court, solely a legal one, is whether the requirements of that section are to be applied against the British applications.

Background to Appeal No. 8774

This appeal is from the decision of the Patent Office Board of Interferences awarding priority of invention to Metlesies et al., the senior party, as to a single count relating to certain 1, 4-ben-zodiazepine-2-one compounds.

Kawai et al. (Kawai) became involved through their application serial No. 675,249 filed October 13, 1967. Metlesics et al. (Metlesics) became involved through their application serial No. 629,934 filed April 11, 1967.

In view of the respective filing dates, Kawai had the status of junior party when the interference was declared and, therefore, had the burden to establish by a preponderance of the evidence that they were entitled to the award of priority. During the interlocutory stage of the interference, Kawai presented a motion under Patent Office Rule 231(a) (4) to be accorded the benefit of the filing date, October 14, 1966, of Japanese application serial No. 67766/66, as would be allowed by section 119, and to shift the burden of proof to Metlesies.

This motion was denied by the primary examiner on the ground that the Japanese application did not comply with 35 U.S.C. § 101 or 35 U.S.C. § 112. The examiner said:

Thus for Kawai to receive the benefit of priority based on the Japanese application, the Japanese application must meet the statutory requirements for a proper United States application including such requirements as 35 U. S.C. 101 and 35 U.S.C. 112, since a United States application, in order to be proper, and to be relied upon for benefit of priority under 35 U.S.C. 120, must comply with the utility and how to use requirements of 35 U.S.C. 101 and 35 U.S.C. 112.

Ultimately, the examiner concluded that the Japanese application did not meet these requirements, meaning Kawai would be restricted for priority purposes to the filing date of the United States application. The Board of Interferences sustained the examiner’s decision, thus prompting this appeal by Kawai.

In this appeal, appellants argue that the requirements of section 112 should not be read into section 119. However, they do not concede that the Japanese application is inadequate to meet the requirements of section 112. In that respect this appeal is unlike those coming from the Board of Appeals.

If appellants’ Japanese application does meet the requirements of section 112, they would be entitled to the benefit of its filing date no matter what decision is made by us regarding the applicability of its provisions to foreign-filed applications relied upon for priority purposes. However, we first turn our attention to the question of whether a foreign application must meet the disclosure requirements of our law.

OPINION

The Requirements of Section 112 and Foreign Applications

This court has extensively discussed the history and purpose of section 119 in In re Hilmer, 359 F.2d 859, 53 CCPA 1288 (1966). However, we think a brief review here will be an aid to understanding our decision.

The predecessor statute (R.S. 4887) to section 119 was enacted on March 3, 1903 (32 Stat. 1225). The purpose of the earlier statute was to secure for United States inventors certain benefits under a treaty known as the Convention of Paris for the Protection of Industrial Property 20th March 1883 (Paris Convention). The United States had become an adherent to this treaty in 1887.

Prior to the time when the treaty became effective, an inventor’s right to a patent could be defeated in most countries if prior to the date an application for patent was filed, a publication or use of the invention by the inventor or a third party had occurred in the country where the application was made. In some countries, e. g., France, a publication or use anywhere in the world would be sufficient to defeat the applicant’s right to a patent. This would be true even though the inventor had made an application for a patent, on the same invention in another country, usually his native country, prior to the occurrence of any of these disabling events.

Article 4 of the Paris Convention represented an accord among the signatories whereby an inventor could deposit an application in one Convention country, usually but not necessarily his own, and delay filing in a second for up to seven months (later extended to twelve months) without losing his right to a patent because of an intervening use or publication. This right to delay filing is what we now refer to as the “right of priority” recognized in section 119.

It was also recognized that this right of priority extended to those eases where two applications for patents on the same invention were filed in a Convention country by different inventors. In such a case an applicant could have his application given the benefit of the filing date of an earlier application in another Convention country.

In effect, then, with adoption of the Paris Convention, an applicant's rights in one country insofar as they are affected by the filing date of a patent application could be determined as of the filing date of an earlier filed application in another country if both countries adhered to the Paris Convention. This was a particular advantage for an applicant in those countries where, unlike in the United States, the first to file for a patent on an invention is entitled to it even though he might not have been first to make the invention.

. The benefit of an earlier filing date in the United States is manifest by the factual patterns behind the appeals now before us. In one circumstance the benefit of an earlier filing date makes it possible to avoid the effect of otherwise pertinent prior art if the claims come to be rejected under sections 102 or 103 in view of that art. In the other circumstance, the benefit of an earlier filing date may make it possible for a party to obtain an award of priority in an interference where otherwise he might fail.

The Paris Convention was not, however, self-executing and required implementing legislation. The bill eventually enacted by Congress had been drafted by a commission created by Act of Congress (30 Stat. 431) in 1898 to study the effect of the Paris Convention on United States law. The commission submitted a report, dated November 27, 1900 and printed in 1902, entitled “Report of the Commissioners Appointed to Revise the Statutes Relating to Patents, Trade and Other Marks, and Trade and Commercial Names,” Senate Document No. 20, 56th Congress, 2d Session.

Article 4 of the Paris Convention in effect at the time this report was made read as follows:

Any one who shall have regularly deposited an application for a patent of invention, of an industrial model, or design, of a trade or commercial mark,-in one of the contracting States, shall enjoy for the purpose of making the deposit in the other States, and under reserve of the rights of third parties, a right of priority during the periods hereinafter determined.
In consequence, the deposit subsequently made in one of the other States of the Union before the expiration of these periods can not be invalidated by acts performed in the interval, especially by another deposit, by the publication of the invention or its working by a third party, by the sale of copies of the design or model, by the employment of the mark.
The periods of priority above mentioned shall be six months for patents of invention and three months for designs or industrial models, as well as for trade or commercial marks. They shall be augmented by one month for countries beyond the seas.

The language suggested by the commission to implement this part of the treaty was created by Congress as an amendment to R.S. 4887. That language appears with but inconsequential changes in section 119, first paragraph of the current statute. In pertinent part, section 119 reads as follows:

§• 119. Benefit of earlier filing date in foreign country; right of priority
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 * * *. [Emphasis ours.]

The two sides in these appeals suggest different interpretations for this portion of section 119. These interpretations are based on different notions as to whether the language “same application” in the statute refers to the United States or the foreign application. Appellants insist that it refers to the United States application. In their view, the language of the statute compels the conclusion that the United States application is to be treated as if it were filed in the United States on the date the foreign application was filed. For that reason they argue that only the United States application need be judged to see if it meets the requirements of section 112 in order to be accorded the benefit of the earlier filing date.

Appellees suggest that section 119 should be interpreted as meaning that it is the foreign application that is to be considered as having been filed in this country on the date it was filed abroad. Therefore, they argue that it, the foreign application, must be examined to determine if it meets the disclosure requirements of section 112 if it is to be given an effective United States filing date.

At the outset, we must disabuse each side of the notion that the language of the statute is so unambiguous as to compel one result or the other. It is our view that neither result can unimpeachably be drawn from the statutory language itself. In the very history to R.S. 4887, the Commissioner’s Report, we find inconsistent language as to which application “same application” refers. At page 24 of the report, one can read:

We are, therefore, of the opinion that an amendment to the law should be made, providing that the foreign application shall have, in case an application is filed in this country by the applicant abroad within the specified period, the same effect as if filed here on the day it was filed abroad.

However, at page 27 of the report, the reduction of the opinion to a recommendation for a change in the law led to this language:

The application for a patent filed within seven months of the filing of an application for a patent for the same invention in any foreign country which is a party to the International Convention should be given the same force as regards the question of priority that it would have if filed on the date on which the foreign application was filed.

Because the statutory language is itself ambiguous, we must look behind the statute and its language in an effort to determine what standard the foreign application must meet. More precisely, we must look to the intent behind R.S. 4887 and cases decided under it, since section 119, first paragraph was meant to be a codification of existing law. See Reviser’s Note, 35 U.S.C.A. § 119. We also think that a consideration of the interrelationship of section 119 to other parts of the statute will be helpful. All of this directs us, inevitably we think, to the conclusion that the foreign application must meet the requirements of section 112.

Under our law, an applicant for a patent, with one exception not relevant here, cannot establish a date of invention by proving acts done in a foreign country except as provided for in section 119. This prohibition is found in 35 U. S.C. § 104 The only act done abroad that is referred to in section 119 is the filing of an application for patent in a foreign country. Therefore, the net effect of sections 104 and 119 is to restrict a foreign inventor, for purposes of United States law, to a date of invention which corresponds to the date when his United States application was filed unless there was an earlier filing of a foreign application. In this respect, the act of filing the United States application has the legal effect of being, constructively at least, a simultaneous conception and reduction to practice of the invention.

Since the foreign inventor is allowed by section 104 to establish a date of invention earlier than his United States filing date if he has made an earlier application for patent in another country, the “right of priority” accorded by section 119 can aptly be described as a right to prove a date of invention no earlier than the date of the foreign filing. It is our opinion that this “right to prove” a date of invention corresponding to the date of filing in the foreign country requires that the act of filing the foreign application be regarded for purposes of United States law as a constructive reduction to practice of the invention in the same way that a filing of a United States application can be so regarded. That the filing of a foreign application could be so regarded under R.S. 4887 is pointed out in Broos v. Barton, 142 F.2d 690, 31 CCPA 1089 (1944). Therefore, we are of the opinion that the foreign application must meet the requirements of the first paragraph of section 112 if the act of filing it is to be regarded as a reduction to practice of the invention.

It is well understood that the act of filing a United States patent application can be regarded as being a constructive reduction to practice of an invention described therein as of the filing date. It follows naturally from this that the written specification in the application is the evidence proving the invention of that which is reduced to practice, i. e., the subject matter to which properly supported claims can be drawn.

We think it is now settled that an invention cannot be considered as having been reduced to practice in the sense that a patent can be granted for it unless a practical utility for the invention has been discovered where such utility would not be obvious. See 35 U. S. C. § 101; Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966); In re Kirk, 376 F.2d 936, 54 CCPA 1119 (1967); In re Joly, 376 F.2d 906, 54 CCPA 1159 (1967). Therefore, a constructive reduction to practice, as opposed to an actual reduction to practice, is not proven unless the specification relied upon discloses a practical utility for the invention where one would not be obvious. We also think that proof of a constructive reduction to practice would also require that there be sufficient disclosure in the specification to enable any person skilled in the art to take advantage of that utility where it would not be obvious how this is done. This latter requirement is, of course, the so-called “how to use” requirement of section 112. It goes without saying that proof of a constructive reduction to practice would also require that the specification be sufficient to enable anyone skilled in the art to make the invention, i. e., the “how to make” requirement of section 112 should also be met by the specification.

If these are requirements which a United States specification must meet if it is to be adequate to support a reduction to practice by the act of filing the application, it follows that a foreign application must meet the same requirements if it is to be used to prove a date of invention. If only the United States application had to meet these requirements, the effect would be that it could be used as of its filing date to prove a date of invention which had occurred up to one year earlier. This would be an untenable position since section 104 prohibits the introduction of proof of any act other than the filing of the foreign application which could be used to buttress the claim that the reduction to practice had been complete as of the foreign filing date.

The net effect of not requiring the foreign application to meet the disclosure requirements of United States law would be that an inventor could file a patent application for promising chemical compounds in a foreign country not requiring a disclosure of utility and have up to one year to determine a practical utility before filing in the United States and yet claim an earlier date of invention. We do not think section 119 should be construed as permitting this.

In support of a contrary position, appellants point to the absence of a specific requirement that the foreign specification be adequate within the meaning of the first paragraph of section 112. This, they say, is evidence that no such requirement was intended particularly when considered in light of 35 U.S.C. § 120 which does require that an earlier United States application relied upon for priority purposes must meet these requirements. After all, had it so intended, Congress could have used the same language in section 119 since both were enacted at the same time. Also, this difference in language between sections 119 and 120 was pointed out in In re Hafner, 410 F.2d 1403, 56 CCPA 1424 (1969).

The simplest answer to this argument is that section 120 was new to the 1952 statute, whereas section 119, first paragraph was a codification of existing law, as we have pointed out above. See also In re Hilmer, supra, at 359 F.2d 879, 53 CCPA 1314. Thus, there would not be any necessity of adding new language to section 119 if the disclosure requirements of United States law had been applicable to foreign applications under R. S. 4887. Appellants have not argued that Congress intended any change in the law when it enacted section 119. Furthermore, we think that absent a clear contrary intent of Congress, it might be necessary to read the requirements of section 112 into section 120 had it not been explicitly done. Again, this would be required because at least one purpose of section 120 is to provide proof that an invention had been reduced to practice at least as early as the filing date of an earlier United States application.

From our review of the cases arising under R.S. 4887, the only one in which the determinative issue was whether a foreign application must comply with disclosure requirements of United States law is In re Smyth, 189 F.2d 982, 38 CCPA 1130 (1951).

The inventor Smyth had presented claims to the Patent Office which were identical to those of an existing United States patent. His intent was to eventually have an interference declared between his application and the patent. However, his claims were rejected on the patent. To avoid this rejection, he sought to rely upon an earlier filed British provisional specification for priority purposes. That application had a filing date earlier than the United States patent which was the basis of the rejection.

The Patent Office refused to accord to Smyth the benefit of the earlier filing date for the reason that the provisional specification was not sufficient to support the claims. This court affirmed the decision of the Board of Appeals that the disclosure was indeed inadequate to meet the requirements of R.S. 4888, the predecessor statute to section 112. Before applying the requirements of R.S. 4888, the court said:

Perhaps the situation may be comprehended more readily when it is stated that, in our opinion, the case requires precisely the same consideration it would receive if the British provisional specification constituted the entire specification of appellant’s United States application.
In other words, if there were here an application for patent the specification of which contained only the provisional specification of appellant’s British patent, without drawings or other indicia, could such specification properly be held to meet the requirements of R.S. 4888, 35 U.S.C.A. § 33, for a written description defining the manner and process of making and using the device for which patent is sought in such full, clear, and exact terms as to enable any person skilled in the television art to make, construct, and use the same? That is what the statute demands; it is not satisfied with less; and the matter must be tested by that requirement.

Appellants have attempted to distinguish the Smyth case from the facts here on the ground that it did not involve a foreign application having as its only defect an inadequate statement of utility which is required of a United States application. They argue that the British specification in that case was so defective that it could not be determined if it described the same invention as that of the United States application. Assuming that their factual analysis is correct, we do not agree with appellants that these differences require a different result. In either case, i. e., under the facts of the Smyth case or under those of these appeals, the specification is so defective that the act of filing cannot be regarded as a constructive reduction to practice.

Further support for the position that the adequacy of the foreign application is to be tested under United States law is found in the Commissioner’s Report. At page 24 of the report, it reads:

There is nothing in the letter or the spirit of the Convention to require the United States to give to the application in any respect except its date any standing to which it would not be entitled if filed by a citizen of the United States. Necessarily, in order to be given the advantage of the date of the foreign application, the application filed here must correspond in all substantial particulars with the foreign application; that is, it must be for the invention disclosed in the foreign application. Nothing in the nature of new matter or unwarrantable expansion of the disclosure of the invention in the original application can be permitted.
If the prior foreign application fails to disclose the invention disclosed in the application filed here, it can not serve as a basis for the claims of priority under the Convention.
The sufficiency of the disclosure and the novelty and patentability of the invention as found in the foreign application must be decided in accordance with existing laws, precisely as in a case of a like application filed by a citizen of the United States.

Notwithstanding the above, appellants argue that the only requirements a foreign applicant must meet are those specifically set forth in section 119 and enumerated by this court in Schmitt v. Babcock, 377 F.2d 994, 54 CCPA 1392 (1967). In that case the court said:

We construe section 119 as follows. Where a proper claim for priority is made a timely filed United States application is entitled to the earlier filing date of a foreign application when (1) “any person” or his “legal representatives or assigns” has (2) “previously regularly filed * * * in a foreign country which affords similar privileges” (3) a foreign application “for the same invention.” The requirements of section 116 and Rule 45 are inapplicable to foreign applications where a claim to the benefit of an earlier filing date is made under section 119.

Appellants insist that they have met these requirements. In particular, they point out that disclosure of utility is not a factor in determining whether the foreign and United States application are directed to the same invention, citing In re Kirchner, 305 F.2d 897, 49 CCPA 1234 (1962).

We think appellants have read too much into the Schmitt v. Babcock decision as the adequacy of the foreign disclosure was not an issue in that case. Instead, the court was addressing itself to the question of whether the requirements of 35 U.S.C. § 116 must be met by a foreign application when a claim to the benefit of an earlier filing date is made under section 119.

In Schmitt v. Babcock, the appellants were seeking to rely upon an earlier filed application naming as inventor but one of the two named co-inventors on the United States application. The court held that it was not mandatory that the foreign application meet the requirements of section 116 in order to be a basis for an earlier filing date. However, we do not consider that decision inconsistent with our conclusion in this case since the requirements of section 116 are not related to the question of whether the filing of the foreign application can be regarded as a constructive reduction to practice of the invention.

Furthermore, we are of the opinion that the requirements enumerated by us in Schmitt are merely the formal or procedural ones that must be met if the foreign application is to be treated as if filed here at the same time as abroad. The satisfaction of those requirements is necessary for obtaining the benefits of section 119, but may not be sufficient to enable the applicant to prevail in a given instance. The satisfaction of these requirements does not give the applicant more rights than he would have had if he had first filed in this country. In other words, the extent of the right of priority is measured by the content of the foreign specification. The applicant is entitled to the benefit of what it does disclose and no more. See In re Ziegler, 347 F.2d 642, 52 CCPA 1473 (1965).

Appellants also argue that it would be unfair to require that the foreign application be drafted in a manner sufficient to comply with section 112. They also hypothesize that in certain situations compliance with section 112 would render the invention described in the foreign application unpatentable in the country where originally filed.

With respect to these arguments we find ourselves in complete agreement with the observations of the Board of Appeals. To insure compliance with our law, by those seeking to obtain rights under our law, would require very little additional disclosure by an applicant. Furthermore, the effect of such a disclosure on patent rights in the foreign country as conjectured by appellants is based on pure speculation.

In summary, it is our view that the purpose of the Paris Convention was to have an application made in a foreign country treated as the equivalent of a domestic filing. We believe that equivalent treatment is accorded when the foreign application is weighed under the first paragraph of section 112 in the same manner as would a United States application under section 120. To accept appellants’ view would mean than a foreign application would be given greater effect that would have been possible had it first been filed here. For these reasons we find ourselves in agreement with the Board of Appeals and the Board of Interferences on this issue.

Adequacy of the Japanese Disclosure

We next turn our attention to the argument of appellants in appeal No. 8774 that their Japanese application does meet the requirements of sections 101 and 112.

The count of the interference reads as follows:

1. A compound of the formula:

wherein R is selected from the group consisting of lower alkyl and phenyl and X is selected from the group consisting of hydrogen, halogen and nitro.

The only statements relating to the utility of the compound of the count are on pages 1 and 3 of the translation of the Japanese application found in the record. At page 1 it is said:

This invention relates to a method of producing 2H-1, 4-benzodiazepine-2-one derivatives which show pharmacological effects on the central nervous system.

At page 3 it reads:

Compound (III), [the compound of the count], exhibits excellent pharmacological effects on the central nervous system, and, as such, is of value as a medicine.

The Board of Interferences did not consider this sufficient disclosure and said:

The above statements in the Japanese application do not satisfy the requirements of 35 USC 112 that the specification contain a written description of the manner of using the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, . . ., to make and use the same.” The Japanese application is devoid of any teaching as to what effects on the central nervous system are produced by the compounds of the count. Nor is there any teaching of the manner in which the compound is to be administered. It is well established that in order to constitute a constructive reduction to practice an application must contain sufficient disclosure to enable those skilled in the art to which the invention pertains to use the invention without extended experimentation. Here, the Japanese application does not meet this standard.

Appellants agree that these statements alone do not constitute adequate disclosure. However, it is their view that this disclosure illuminated by the prior art would be adequate to enable one skilled in the art to use the invention. To support this, they made of record a patent to Archer et al. (Archer) which discloses compounds alleged to have anticonvulsant activity. About these compounds, Archer says:

Compounds of Formula I above and their pharmaceutically acceptable salts are useful as anticonvulsants, and are particularly noteworthy in that their efficacy for this purpose is not impaired by unwanted side effects. They can be administered internally, for example, parenterally or enterally in conventional pharmaceutical dosage forms. For example, they can be incorporated in conventional liquid or solid vehicles to provide elixirs, suspensions, tablets, capsules, powders and the like according to accepted pharmaceutical practice.

One such compound disclosed by Archer has the formula:

Appellants ask that it be compared with the following compound disclosed in their Japanese application and within the scope of the count:

The board had this to say with regard to such a comparison:

The Archer et al. patent No. 3,236,838, relied upon by Kawai et al. to show that the utility of the compounds of the count was known, cannot be here relied upon to supply the written description of how to use the compound;of the counts. The compounds described in the Archer et al. patent are not so closely related to the compounds of the count that it may be presumed that the compounds of the count and those of Archer et al. would have the same utility.

Appellants disagree with the board’s conclusion. It is their position that the two compounds are so closely related that the utility of their compound and how to use it would be apparent to one of skill in the art in view of their disclosure that the compounds of the count can act upon the central nervous system. To support this, they argue that the structures of the two compounds differ only by a “nonfunctional” -CH2-group and both compounds have the same func-

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tional CH3-NH-C-group on the 1 position of the benzodiazepine ring. Ultimately, they say, one skilled in the art would easily conclude that the compounds within the count would function as anticonvulsants.

Appellees rebut this argument by pointing out that there is no basis to conclude that the -CH2-group is nonfunctional. They point out that Cl-Cl, chlorine, differs from C1-CH2-C1, methylene chloride, by a -Ch2-group, yet the two compounds resemble each other very little in their chemical properties. They also point out that the functional group alluded to by appellants is attached to a nitrogen atom of the diazepine ring of the compound of the count, making a urea type structure, whereas in Archer there would be no urea structure.

We agree with the board that there are sufficient structural dissimilarities between the compounds of Archer and those of the count to preclude reliance on Archer to supply the missing disclosure on how to use the compounds disclosed. One skilled in the art is well aware that subtle changes in chemical compounds can radically alter the effects on a human body. In re Kirk, supra. Furthermore, from Archer alone we cannot conclude that a mere statement that compounds have utility as anticonvulsants is sufficient to enable one of skill in the art to use the desired compound. For example, we note that in the applications involved in the interference there is given a suggested dosage. At any rate, we think that the citation of Archer alone is insufficient evidence that appellants’ application is adequate to enable one of skill in the art to use the invention. Accordingly, we think the Board of Interferences correctly held that appellants had failed to prove that their Japanese application would be adequate under United States law.

Because we hold that section 119 requires that a foreign application must meet the disclosure requirement of section 112 in the same way that a United States application must before the benefit of its filing date is accorded to a later United States application, the decisions of the Board of Appeals and the Board of Interferences in each appeal before us must be affirmed.

Affirmed.

      . Appeal No. 883S involves serial No. 474,178 filed July 22, 1965; appeal No. 8839 involves serial No. 461,515 filed June 4, 1965; appeal No. 8840 involves serial No. 462,107 filed June 7, 1965.

      . The first paragraph of 35 U.S.C. § 112 reads:
      The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

      . Senate approval came on March 2, 1887 and 29, 1887. President Grover Cleveland ratified on March

      . § 104. Invention made abroad.
      In proceedings in the Patent Office and in the courts, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country, except as provided in section 119 of this title. Where an invention was made by a person, civil or military, while domiciled in the United States and serving in a foreign country in connection with operations by or on behalf of the United States, he shall be entitled to the same rights of priority with respect to such invention as if the same had been made in the United States. [July 19, 1952, ch. 950, 66 Stat. 798.]

      . Compare the language of the first paragraph of 35 TJ.S.C. § 112, see footnote 2, supra, with that of R.S. 4888 reading, in part, as follows:
      Before any inventor or discoverer shall receive a patent for his invention or discovery he shall make application therefor, in writing to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same * * *.

      . U.S. 3,236,838 issued February 22,1966.


source: Caselaw Access Project

author: MARKEY, Chief Judge.

license: Public Domain

text:
    Application of Ettore Da FANO.
    Pat. Appeal No. 9159.
    United States Court of Customs and Patent Appeals.
    July 12, 1973.
    James W. Geriak, Thomas D. Kiley, Los Angeles, Cal., Jesse B. Grove, Jr., Arlington, Va., Lyon & Lyon, Los Angeles, Cal., attorneys of record, for appellant.
    Joseph F. Nakamura, Acting Solicitor for the Commissioner of Patents. Robert D. Edmonds, Oakton, Va., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is. from the decision of the Board of Appeals affirming the rejection of claims 1-5 in appellant’s application serial No. 812,969, filed March 28, 1969, for “Resin Composition” as anticipated by Duhnkrack. We affirm.

The present application is a continuation of the application involved in the earlier case of In re Da Fano, 55 CCPA 1134, 392 F.2d 280 (1968). For a discussion of the invention involved and the disclosures of Duhnkrack as well as the resolution of the issue of the adequacy of the affidavit filed under Rule 131 to remove this patent as a reference, this court’s earlier opinion is incorporated herein in toto.

As a result of the decision in that case, appellant allowed the parent application to issue with claims restricted to the quaternary ammonium salts as gelation inhibitors and filed this continuation with claims limited to catalyzed compositions containing tertiary amine salts as inhibitors. The only addition to the record of the prior case consists of affidavits by Parker and Moffett, persons acknowledged to be at least of ordinary skill in the art if not experts. Parker in his affidavit avers that he has examined the Rule 131 affidavit of Da Fano (said affidavit having been held in Da Fano to establish a reduction to practice employing a quaternary ammonium salt as gelation inhibitor) and that

[h]e believes that at a time prior to July 6, 1954, one of ordinary skill in the polyester resin art would have been convinced to a reasonable certainty of the interchangeability of tertiary amine hydrohalides and quarter-nary ammonium salts as gelation inhibitors in the said copolymerization, once given copolymerization in the presence of resin soluble copper and the quaternary ammonium salt. At a time prior to July 6, 1954, he would have been convinced to a reasonable certainty that tertiary amine hydro-halides could be employed in the copolymerization interchangeably with the quaternary ammonium salt inhibitors, once given the copolymerization. He is now and would prior to July 6, 1954, have been aware of no reason why the interchangeability of the two inhibitors apparent from comparing his U.S.P. Nos. 2,593,787 and 2,646,416 (both issued prior to July 6, 1954) would be in anywise affected by their employment with resin soluble copper in the Da Fano copolymerization. In fact, it is not.

The Moffett affidavit contains similar statements.

In the earlier ease it was held that appellant could not rely solely upon prior art teachings of the equivalency of tertiary amine salts and quaternary ammonium salts as gelation inhibitors in similar systems, but not containing copper salts, to indirectly antedate the tertiary amine species disclosed in the Duhnkrack patent. The issue now before us is whether the test for determining the adequacy of a Rule 131 affidavit as set forth in In re Clarke, 53 CCPA 954, 356 F.2d 987 (1966) and applied in Da Fano, has been satisfied in light of these newly submitted affidavits, purportedly addressed to the generic significance of the showing made in the Da Fano affidavit. Thus we must determine “whether the showing would convince one of ordinary skill in the art to a reasonable certainty that the applicant possessed so much of the invention as to encompass the reference disclosure.” Da Fano, 55 CCPA at 1138, 392 F.2d at 284.

We would note in passing that the solicitor has argued that the Clarke test is inapposite in the present case, the claims here being directed solely to tertiary amine salts rather than to the genus consisting of quaternary ammonium salts and tertiary amine salts. Statements of this court in In re Gladrow, 56 CCPA 927, 406 F.2d 1376 (1969) are said to distinguish the Clarke situation wherein a claim to a genus was being sought from the situation wherein a claim to the reference species is being sought. In Gladrow it is made clear that indirect antedating of a reference species by showing prior invention of other patentably indistinct species is not available in the latter type of situation.

We consider drawing such a factual distinction under the present circumstances to be extremely harsh. Instead we agree with appellant, as urged at oral argument, that the parent application and the present continuation must be considered together and the invention disclosed therein viewed as a whole. Thus a genus-species situation does exist and the Clarke standard is applicable.

At the same time, we do not find it necessary or proper to consider arguments as to whether or not the Duhnkrack patent is in fact a 102 reference. It was conceded in the earlier case and here that the appealed claims are unpatentable over Duhnkrack. No reason of appeal has been directed to the present application of the reference under 35 U. S.C. § 102. Hence we find no reason to deviate from the assumption of the earlier opinion that the tertiary amine salts of Duhnkrack also act as gelation inhibitors.

It was within this frame of reference that the Board of Appeals reviewed the affidavits of Parker and Moffett and found them inadequate to change this court’s previous holding on the sufficiency of the Da Fano affidavit to antedate the Duhnkrack reference as to the tertiary amine salts. Referring to this court’s earlier discussion of the inapplicability of In re Fong, 48 CCPA 897, 288 F.2d 932 (1961), to the facts of this case, the board quoted our statement that:

* * * there is no showing here that the copper compounds act independently of the other materials in the composition. The evidence before us, in fact, is to the contrary. Appellant’s specification states that the beneficial effects of the copper salts “occur to best advantage” only when using these two classes of gelation inhibitors rather than certain other prior art gelation agents specifically-mentioned.

Then turning to the present case, the board stated:

The present record is no more convincing to us than the record before the court, as the two opinion affidavits are silent on the above point raised by the court’s reading of appellant’s specification. Nor does either affidavit indicate that appellant conceived of using the tertiary amine species, or that he considered any other species to be equivalent to the quaternary ammonium species he tested.

On this failure of appellant to demonstrate that he had established the equivalency of the two classes of gelation inhibitors here involved prior to the effective date of Duhnkrack, the board affirmed the 102 rejection.

Appellant maintains that the board “missed the point” in that its attention should have been directed toward the requirements of Clarke, as applied in Da Fano, rather than the discussion of the implications of Fong. It is appellant’s basic contention that the augmented showing, or more precisely the prior showing taken in conjunction with the affidavits of Parker and Moffett as to its broader generic significance, provides persuasive evidence that one of ordinary skill in the art would be convinced that Da Fano possessed so much of the invention as to encompass the tertiary amine salts of the reference prior to the effective date thereof. Thus it is argued that the prior statement of the court, in applying the Clarke standard, that there is nothing in the showing “which might persuade one of ordinary skill in the art that the inventor possessed the tertiary amine salts of the Duhnkrack reference” no longer holds true.

We cannot agree. The evidence still stands that copper compounds only function “to best advantage” when a quaternary ammonium or tertiary amine gelation inhibitor is employed. No rebuttal has been offered on this point. Nor has the scope of the inventor’s own work prior to the date of the reference been expanded by the newly submitted affidavits. This court’s prior holding that there was nothing in the Da Fano affidavit “to indicate that the inventor considered all gelation agents, or these two specifically, to be equivalent in the presence of copper” remains unchallenged.

All of this must be taken into consideration. Statements by persons of ordinary or greater skill in the art cannot be used to infer generic applicability from the inventor’s reduction to practice of a single species when, as here, it has been established that the action of that species was not independent of the environment in which it was employed.

Accordingly, no basis exists for changing the holding of our prior opinion. The decision of the board is affirmed.

Affirmed.

      . U.S. 2,822,344, issued February 4, 1958.

      . Serial No. 501,727, filed April 5, 1955.

      . A terminal disclaimer was also filed to obviate any question of double patenting.


text:
    Application of Francis E. COSTELLO.
    Patent Appeal No. 8901.
    United States Court of Customs and Patent Appeals.
    June 28, 1973.

      John F. A. Earley, Philadelphia, Pa., James W. Dent, Washington, D. C., attorneys of record, for appellant
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals sustaining the rejection of claims 1-39 in appellant’s application serial No. 588,725, filed October 24, 1966, for “Plating Process and Bath.” At oral argument appellant withdrew the appeal with respect to claims 14, 15 and 36-39. Accordingly, the appeal is dismissed as to these claims. All of the claims remaining under consideration, i.e. claims 1-13 and 16-35, were rejected under 35 USC 1Ó3 as unpatentable over Brenner et al. Claims 7, 17, 18 and 20 were additionally rejected under 35 U.S.C. § 112. We affirm in part and reverse in part.

The Invention

The invention relates to an alkaline electroless bath, useful for applying a nickel coating to articles at low temperatures. Such conditions permit the plating of plastic articles without danger of heat distortion.

Claims 1 and 7 are representative of the bath compositions:

1. An electroless nickel bath for applying a nickel coating to articles, comprising water, nickel sulphate, nickel chloride, reducing agent anions for reducing the nickel ions to a metal, and a stabilizing agent for controlling the operating speed of the reducing agent, the bath having an alkaline pH, and the ratio by weight of nickel ions to reducing agent anions being about 1 to 2.7.
7. The bath of claim 1 including for each gallon of bath about % gallon of water, about 160 to 640 c.c. of ammonium hydroxide, about 1% to Qi/2 ounces of nickel sulphate, about 4 to 16 ounces of nickel chloride, about 9% to 381/2 ounces of sodium citrate, about 6% to 27 ounces of ammonium chloride, and about 4 to 24 ounces of sodium hypophosphite.

Sodium hypophosphite acts as the reducing agent and the combination of sodium citrate and ammonium chloride as a stabilizing agent.

The method of coating articles employing this bath is also claimed, as illustrated by claim 12:

12. A method of applying a nickel coating to articles comprising treating the articles with a bath of water, nickel sulphate, nickel chloride, a reducing agent for reducing the nickel ions to a metal, and a stabilizing agent for controlling the operating speed of the reducing agent.

A third facet of the invention is found in those claims drawn to a replenish solution for restoring the bath to original constituent levels.

The Rejection

Brenner et al. (Brenner) disclose alkaline electroless baths for plating metallic surfaces with nickel. The bath constituents include nickel salts such as nickel chloride and nickel sulfate to provide nickel ions, sodium hypophosphite to reduce the nickel ions to metal, ammonium hydroxide to maintain alkalinity, and a combination of sodium citrate and ammonium chloride to hold the nickel salts in solution. In the exemplary bath compositions the nickel salts and sodium hypophosphite are employed in ratios ranging from 10:1 to 3:10, 3:1 being preferred. According to the undisputed calculations supplied by the solicitor, these values represent a range of hypophosphite anion to nickel ion of 0.83:1 to 8.3:1. In the Brenner baths a relatively low concentration of hypophosphite ion (0.07 to 7.5 parts by weight/100 total parts) is employed in contradistinction to the prior art use of high concentrations. The baths are preferrably maintained at about 90° to 100° C, although the broad range of 20° to 100° C is said to be operational.

It was the examiner’s position that because Brenner disclosed baths containing the same ingredients “within ranges which include the values called for by these claims,” it would be obvious to select “a specific set of numerical values from these operable variables.” The possibility of low bath temperatures even in the Brenner process was emphasized. Appellant’s arguments concerning the prior art problems associated with the plating of plastic articles were “not considered apropos” inasmuch as “none of the claims are directed specifically to plating plastics.”

In sustaining this rejection, the board stressed the overlap of the reference ranges and those of appellant. Alleged advantages in stability, rate of deposition, type of substrate, or temperature of use were deemed “patentably immaterial * * * in the absence of a compositional distinction in the claims.” Appellant’s contentions that Brenner was unaware that bath compositions within the claimed ranges would plate plasties at room temperatures were dismissed with the statement that:

* * * Appellant has not shown that there are critical limits within the reference disclosure which assure unobvious results, and that outside these limits such results cannot be obtained.

The affidavit of Dr. Narcus, an expert in the field, on the long-standing problem of plating plastic and the solution, in his opinion, by appellant’s baths, was found to be irrelevant on the basis that the baths and operating conditions had in fact been disclosed by Brenner.

Claim 7 was additionally rejected under 35 U.S.C. § 112 (paragraph one, according to the solicitor’s brief) as being based on an insufficient disclosure. Claims 17, 18 and 20 were rejected (under 35 U.S.C. § 112 according to the board and under paragraph two of 35 U.S.C. § 112 according to the solicitor) as being substantial duplicates of one another. In view of our disposition of the § 103 issue infra, we need not consider these rejections.

OPINION

Looking first to the § 103 rejection, we must agree that the Patent Office has established a case of prima facie obviousness for the claimed subject matter. Brenner discloses all of appellant’s bath constituents and general ranges for the same which encompass the claimed nickel : hypophosphite ratio and at least some of the hypophosphite concentrations. Although the emphasis in Brenner is on “relatively low” concentrations of hypophosphite to avoid various disadvantages of high concentrations, it is taught that in alkaline baths the rate of deposition is proportional to the hypophosphite concentration to a substantial extent. It is also suggested to replenish the supply of hypophosphite during operation. As for the process, Brenner discloses the use of bath temperatures as low as 20° C, although higher rates of deposition and better deposits are said to be obtained at 90° to 100° C. Moreover, the “articles” being coated in the claimed process cannot be distinguished from the metallic surfaces plated by the Brenner process.

But that is not the end of the matter. There is no justification for simply ignoring appellant’s allegations of unexpected results. See In re Freeman, 474 F.2d 1318 (CCPA 1973). The broad teachings of Brenner cannot preclude the establishment of unobviousness for specific bath compositions not anticipated thereby. Evidence of properties such as improved stability, higher rate of deposition and capacity to satisfactorily plate plastic articles may well provide adequate rebuttal to the prima facie case established by the Patent Office.

The solicitor contends there is no objective evidence in the record to sup-' port the claims of either increased stability or greater deposition rate for appellant’s bath compositions. We agree. We can find no comparisons with any specific Brenner bath compositions which might even tend to establish any distinction for the claimed compositions on these bases. Nor is there any indication that the alleged differences would be other than expected. Under Freeman the establishment of both elements is crucial to any case for unobviousness based on unexpected results.

But the solicitor’s position on the capacity of the claimed compositions to plate plastic articles without heat distortion presents a totally different situation. It is acknowledged that Brenner does not disclose deposition on such a substrate. Furthermore, the Brenner articles which were submitted by appellant during prosecution are alleged to provide concrete evidence that the Brenner baths were admittedly not capable of plating plastic satisfactorily. Hence there is a potential difference over the prior art.

The argument that both the bath and method claims cover the coating of metal and are therefore too broad in the sense of 35 U.S.C. § 103 cannot be accepted in toto. We agree that appellant’s method claims, all of which are broadly drawn to “applying a nickel coating to articles” (emphasis added), are not rendered unobvious by a showing that plastic substrates may also be coated. Hence the method claims still read on obvious subject matter. In re Muchmore, 433 F.2d 824, 58 CCPA 719 (1970). The 103 rejection of method claims 12, 13 and 32-35 must be affirmed.

The same does not hold true, however, for the composition claims. All properties must be considered in determining the obviousness of a composition. In re Murch, 464 F.2d 1051, 59 CCPA 1257 (1972); In re Freeman, supra.

Turning to the Brenner articles previously mentioned, we find that in November 1947 Brenner stated, in discussing potential surfaces for deposition using his new baths:

Plastic surfaces are noncatalytic, and none of the above procedures will initiate the nickel deposition. In an endeavor to plate plastics, several types were tried in the hot nickel solution. Even when precleaned with organic solvents and acids, the plastics remained noncatalytic. No deposition occurred on the surface when immersed in highly concentrated solutions. When a plastic was silvered prior to immersing in the nickel solution, satisfactory deposition failed to occur. This failure was due primarily to the silver flaking from the plastic in the hot solution. Other methods of applying a metal film to the plastic might be more successful.

In the later article in November 1954 he noted:

Subsequent to the publication of our papers in 1947, several laboratories found that nickel could be deposited on glass and plastics by the electroless process.

All of this leads us to the conclusion that the specific Brenner bath compositions were not capable of plating plastic. The capacity of appellant’s baths to do so satisfactorily is an additional property.

Nor can evidence relevant to the unexpected nature of this newly discovered property be ignored. The Brenner article of November 1954 makes it clear that even the techniques developed by others were far from satisfactory for plastic substrates. The Narcus affidavit attesting to the long felt need for baths of this type must also be given weight. The only remaining qualification is that the unexpected properties actually established be commensurate in scope with the claimed compositions.

Here the specification provides the evidence of plating plastic articles with appellant’s bath compositions. But in the only examples which actually demonstrate such plating the bath compositions are restricted not only to a nickel ion: hypophosphite ratio of 1:2.7 but also to a specific ratio of each of the other components to one another. These limitations have also been stressed by appellant in distinguishing over Brenner. Accordingly, we consider only those claims fully defining such limits of the bath compositions to be commensurate in scope with the demonstrated unexpected properties. Claims 6, 10, 11, 22, 24-28 and 30 satisfy this requirement. The § 103 rejection is reversed as to these claims.

Remaining composition claims 1-5, 7, 8, 9, 16-21, 23, 29 and 30 do not recite the essential limitations. Hence the rejection of these claims must be affirmed.

In summary, the § 103 rejection is affirmed as to claims 1-5, 7, 8, 9, 12, 13, 16-21, 23, 29 and 31-35 and reversed as to claims 6, 10, 11, 22, 24-28 and 30. The appeal is dismissed as to claims 14, 15 and 36-39.

Modified.

      . A continuation-in-part of application serial No. 504,192, filed October 23, 1965.

      . While the examiner omitted claims 20 and 21 from the rejection in his Answer, the board included these claims in the rejection, and appellant, although listing this action as a reason of appeal, has not argued the matter in his brief. Accordingly, we will treat the rejection in the same manner as the board.

      . U.S. 2,532,283, issued December 5, 1950.

      . Brenner et al., “Nickel Plating on Steel b,v Chemical Reduction,” Journal of Research of the National Bureau of Standards, Vol. 37, July 1946.
      Brenner et al., “Deposition of Nickel and Cobalt by Chemical Reduction,” Journal of Research of the National Bureau of Standards, Vol. 39, November 1947.
      Brenner, “Electroless Plating Comes of Age,” Metal Finishing, November and December 1954.


author: BALDWIN, Judge.

text:
    V-M CORPORATION, Appellant, v. MAYFAIR SOUND PRODUCTS, INC., Appellee.
    Patent Appeal No. 8959.
    United States Court of Customs and Patent Appeals.
    July 19, 1973.

      F. Vern Lahart, John P. O’Brien, J. A. Dienner, Jr., Chicago, Ill. (Johnson, Dienner, Emrich, Verbeck & Wagner, Chicago, Ill.), attorneys of record, for appellant.
    R. Howard Goldsmith, Henry S. Kaplan, Chicago, Ill. (Dressier, Goldsmith, Clement & Gordon, Chicago, Ill.), attorneys of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, dismissing appellant’s opposition to appellee’s application to register VOICE MAGIC for tape recorders. Opposition was primarily based on prior use and registration of VOICE-O-MATIC, for tape recorders, and VOICE OF MUSIC, for certain sound reproduction equipment including tape recorders.

The board stated:

Turning now to a consideration of the marks in issue, applicant’s mark “VOICE MAGIC” and opposer’s marks “VOICE-O-MATIC” and “VOICE OF MUSIC”, it is apparent that they are alike primarily in that each contains the word “VOICE”. But in view of the highly suggestive if not descriptive character of the term “VOICE” as applied to tape recorders and sound reproducing devices (it is noted that the Examiner required applicant to disclaim the word “VOICE” apart from the mark as a whole) and the obvious and distinct differences in the other portions of the marks, it is concluded that the marks as a whole are readily distinguishable in sound and appearance and create such distinctly different commercial impressions or suggestive connotations that confusion or mistake as to the source of the products sold thereunder is not reasonably likely to occur.

We think that the board gave undue weight to the suggestive nature of VOICE, and to the disclaimer of that word apart from the mark as a whole. As the court said in United States Steel Corp. v. Vasco Metals Corp., 394 F.2d 1009, 1012, 55 CCPA 1141, 1144 (1968) :

A disclaimer does not divide or separate portions of a mark from other portions. The mark remains as a unitary whole. The disclaimer * * * is merely of legal consequences of registration, not of parts of a mark.

Thus the disclaimer of the VOICE part of the mark is of no legal significanee in determining the likelihood of confusion of the marks as a whole.

While the board also concentrated on “the obvious and distinct differences in the other portions of the marks,” in comparing appellant’s VOICE-O-MATIC with appellee’s VOICE MAGIC, the only-differences we find are the presence of -0-, the use of T instead of G, and a slight difference in meaning. In our opinion, those differences are not sufficient either in sight, in sound, or in meaning, to prevent a reasonable likelihood of confusion, mistake or deception, within the meaning of section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). While appellant’s mark may be somewhat suggestive, even considered in its entirety, still appellant is entitled to prevail under the statute where there is a likelihood of confusion, mistake or deception. In re Fisher Radio Corp., 440 F.2d 1036, 58 CCPA 1158 (1971). '

The decision of the board is reversed.

Reversed.

      . Abstracted at 168 USPQ 474 (1970).

      . Serial No. 309,273, filed October 9, 1968.

      . Registration Serial No. 719,670, registered August 8, 1961.

      . Registration Serial No. 821,923, registered January 10, 1967.


author: RICH, Judge.

text:
    Application of Howard COOPER.
    Patent Appeal No. 9029.
    United States Court of Customs and Patent Appeals.
    July 12, 1973.
    Kenyon & Kenyon Reilly Carr & Chapin, New York City, attorneys of record, for appellant; William T. Boland, Jr., Kevin J. Heyd, Charles B. Spencer, New York City, of counsel.
    S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D.C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of application serial No. 13,935, filed October 10, 1968, for Design for Restaurant. The claim is in conventional design form, referring to the drawing in which Fig. 1 is as follows:

The only significant added showing in the other two figures is that the door stands vertically in spite of the curvature of the barrel shape of the building, thus extending outwardly from the bottom of the barrel since it is approximately flush at the top of the door.

Two references are relied on:
Cunliff D-77,814 Feb. 26,1929 Niquette et al. D-78,404 Apr. 30, 1929

Cunliff is the principal reference and is as follows:

Niquette shows a more elaborate building called a “Combined Food and Beverage Vending Station,” the theme of which is two barrels, spaced apart, surrounded below their middles with a sort of enclosed veranda. The overall appearance is not significant since all this reference was relied on for was a showing of flat roofs on the barrel portions. We note that in Niquette three spaced hoops of equal width appear above the roof and two hoops appear below.

The examiner held the design unpatentable under 35 U.S.C. § 103 over Cunliff taken with Niquette, saying, “The overall appearance of the subject design is very similar to the overall appearance of the Cunliff patent.” In his Answer he amplified his views, saying:

It is the examiner’s position that from an ornamental standpoint the changes are so slight to the total design as to be de minimis and the overall appearance would be so nearly the same as to fall within the realm of the obvious. (In re Blum, [374 F.2d 904, 54 CCPA 1231] [1967]).

The board affirmed on the examiner’s reasoning.

OPINION

We think the rejection was sound because we think appellant’s design is obvious in view of the references.

In an effort to persuade us that the examiner erred, appellant resorts to exaggeration to urge that Cunliff is “remarkably different.” He says:

Applicant’s design looks like a barrel. Cunliff s design resembles a barrel only vaguely, the dominant visual impression being more like a rather dour human face wearing a “coolie” hat.
Cunliffs several windows, his dominant door-awning combination, and his conical roof all detract from any attempt of Cunliff to approximate the appearance of a barrel.

Looking at the drawings, we get the distinct impression that Cunliff succeeds quite well in looking like a barrel. We think, in fact, that the resemblance between Cunliff and appellant’s design would appear to be even closer if appellant’s drawing had been done in perspective like Cunliff’s.

Appellant’s arguments about Niquette point out major distinctions but in doing so they miss the point for which this reference was cited, which was only to show the obviousness of putting a flat roof on Cunliff, which we think would be obvious merely from the shape of barrels, which have flat ends.

There are, of course, self-evident differences between appellant’s design and the principal reference: (1) a double door instead of a single door; (2) no windows vs. windows; (3) the shape of the roof; and (4) the number and positioning of the hoops or tie-rods. As to their net effect, the conflict is between the examiner’s view that each change is minor and the final effect so nearly the same that the design would have been obvious and appellant’s position that even with the roof left off of Cunliff his building is “strikingly distinct” therefrom. Appellant says:

* * * Cunliffs structure still appears to resemble a little Alice-in-Wonderland house or building having the characature of a human face.

Unfortunately, there is nothing of record showing what an Alice-in-Wonderland house looks like nor does appellant disclose what illustrator of that classic he had in mind, if any.

Appellant relies on two cases in this court in particular, In re Swett, 464 F. 2d 1399, 59 CCPA 1236 (1972), and In re Laverne, 356 F.2d 1003, 53 CCPA 1158 (1966). Swett was a three-to-two decision holding the design of a lettuce bowl and cover unobvious; it is a precedent in favor of appellant. Laverne involved designs for molded plastic pedestal chairs. Inspection of the drawings in our opinion shows, we think, there was considerably more difference' in overall appearance than exists here. On the other side is one of our most recent design decisions, In re Lapworth, 451 F.2d 1094, 59 CCPA 738 (1971), on a sailboat design, wherein Laverne was also relied on. We think the small differences to be found here are about on a par with those in Lapworth. Another way of viewing the question of obviousness — which, of course, is not without its difficulties — is that it would be obvious to modify Cunliff by changing his roof to a flat one, omit his rather insignificant windows, and door awning, and replace his single, paneled door with a pair of paneled doors. The remaining net effect is that the building still has the general appearance of a barrel, even if a couple of hoops seem to have been shifted a bit, and, moreover, the appearance of the same kind of a barrel as Cunliff. In short, we deem the modifications of Cunliff to have been obvious.

The decision of the board is affirmed.

Affirmed.

       Appellant’s brief is like the book Alice’s sister was reading in the opening paragraph of the story:
      Alice was beginning to get very tired of sitting by her sister on the bank and of having nothing to do. Once or twice she had peeped into the book her sister was reading, but it had no pictures or conversations in it. “And what is the use of a book,” thought Alice, “without pictures or conversations?”
      We find design case brief descriptions without pictures of little use.
      Further pursuing the Alice theme, there is some support in it for appellant’s contention that Cunliff looks like an Alice-in-Wonderland house and the caricature of a human face.
      “When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean — neither more nor less.”
      “The question is,” said Alice, “whether you can make words mean so many different things.”
      “The question is,” said Humpty Dumpty, “which is to be master — that’s all.” Through The Looking-Glass, Chapt. VI.


author: MARKEY, Chief Judge. ALMOND, Senior Judge

text:
    Application of REYNOLDS METALS COMPANY.
    Patent Appeal No. 9066.
    United States Court of Customs and Patent Appeals.
    June 28, 1973.

      Almond, Senior Judge, dissented and filed opinion.
    Browne, Beveridge, DeGrandi & Kline, Washington, D. C., attorneys of record, for appellant. Francis C. Browne, Richard G. Kline, John M. Rommel, Washington, D. C., of counsel.
    Joseph F. Nakamura, Acting Sol., Washington D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board, abstracted at 172 USPQ 141 (1972), refusing registration of appellant’s mark BROWN-IN-BAG for transparent plastic film bags. We reverse.

The Rejection

The application was first rejected on the premise that the mark was an informational slogan. The next and final refusal was based on the view that the mark was an informational slogan and did not “servé to distinguish applicant’s goods from like goods of others.” In the Examiner’s Answer, Sec. 2(e)(1) of the Act of 1946 is cited and refusal is said to be required because the mark would be recognized by purchasers as “merely descriptive of the goods.”

The board, after noting that the goods are cooking bags useable in browning meats, that the word “brown” is defined in Webster’s as “to make brown by scorching slightly” and noting particularly appellant’s advertisements wherein appellant states that meats will “brown right in the bag,” affirmed the refusal in this single sentence:

It is clear enough from the record in this ease that “BROWN-IN-BAG” is descriptive of a purpose or function of applicant’s product, and in the absence of any evidence bearing thereon, we are not persuaded that it would have anything other than a descriptive connotation to purchasers thereof.

OPINION

The parties have argued the case in the briefs on the basis of the board’s opinion. The issue thus presented is whether the mark is merely descriptive of a purpose or function of the goods. If so, it is not registrable. In re The Realistic Company, 440 F.2d 1393, 58 C. C.P.A. 1204 (1971); In re W. A. Sheaf-fer Pen Company, 158 F.2d 390, 34 C.C. P.A. 771 (1946); In re General Permanent Wave Corporation, 118 F.2d 1020, 28 C.C.P.A. 1099 (1941).

We think the mark is suggestive of one purpose to which the goods may be put, i. e. to brown meats in an oven. Suggestive marks are registrable. In re Ada Milling Co., 205 F.2d 315, 40 C.C. P.A.1076 (1953).

The board’s opinion and the Commissioner’s brief cite these, and only these statements in appellant’s advertisements :

“New Reynolds Brown-in-Bag bastes meat brown ’n juicy * *
“Meat brown savory and tender.” “Because the Brown-in-Bag is made of transparent Reynolon, ® meat browns right in the bag.”

From this the Commissioner’s brief states that “only one use is disclosed by this entire record.” Appellant’s advertisements of record, however, disclose other uses:

(1) making the meat juicy;
(2) making the meat tender;
(3) keeping the juices from escaping and splattering on the oven; and
(4) basting the meat in its own juices.

Appellant’s specimens describe the product as “SEE-THROUGH BAGS YOU CAN COOK IN.” That browning is not the sole purpose or function of the bags is further illustrated by appellant’s instruction pamphlets of record wherein the cooking of sauerkraut, pears and vegetables — items not ordinarily browned —is taught.

It is true, but not fatal, that appellant’s mark is informational. Because “bag” is obviously descriptive of the product and “brown” is descriptive of what can happen to some foods when the bag is used, the Commissioner’s brief insists that the mark informs the housewife-purchaser of a purpose to which the bag may be put and thus it is merely descriptive of a purpose and unregistrable. But one may be informed by suggestion as well as by description. Here appellant is not seeking to register the “information” that their bags may be used to brown foods and is not seeking to register a direction such as “brown foods in this bag.” Appellant seeks to register, as a unitary mark, the combination of words and hyphens which form the mark BROWN-IN-BAG.

That appellant appears to find it necessary to advertise, inter alia, that meats may be browned in its bags may indicate its unwillingness to rely on the mark alone even to suggest that function. However that may be, it is the mark appellant seeks to register, not its advertisements.

The Commissioner’s brief reflects concern that registration here would “deprive appellant’s competitors of the use of common generic words which are in the public domain.” We think not. Competitors are deprived only of the use of the three words in such format as would be likely to confuse. Competitors remain perfectly free to inform purchasers that foods may be browned in their bags and to use “brown,” “in” and “bag” in whatever nontrademark manner they choose. Pacific Industries Inc. v. Minnesota Mining & Mfg. Co. Inc., 425 F.2d 1265, 57 C.C.P.A. 1282 (1970); In re Automatic Radio Mfg. Co., 404 F.2d 1391, 56 C.C.P.A. 817 (1969).

In summary, we are unable to agree that the mark BROWN-IN-BAG, standing alone, is merely descriptive of a use, purpose or function of the goods. Accordingly the decision of the board is reversed.

Reversed.

ALMOND, Senior Judge

(dissenting).

I agree with the board that “BROWN-IN-BAG” is descriptive of the purpose and function of appellant’s product. Therefore, I would affirm.

      . Application serial No. 350,521, filed February 4, 1970.


text:
    TORO MANUFACTURING CORPORATION, Appellant, v. KEARNEY-NATIONAL INC., ASSIGNEE OF HAHN, INC., Appellee.
    Patent Appeal No. 8967.
    United States Court of Customs and Patent Appeals.
    July 12, 1973.
    Thomas A. Lennon, Minneapolis, Minn., attorney of record, for appellant.
    Harold B. Hood, William R. Coffey, Indianapolis, Ind., attorneys of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board dismissing an opposition to the registration of the wordmark POW-R-PRO for power lawn mowers, application serial No. 257,622, filed October 31, 1966, claiming first use in October 1962. The board opinion is reported in full, 168 USPQ 383 (1970), and familiarity therewith will be assumed.

Appellant-opposer predicates its opposition on the prior use and registration of Professional for lawn mowers and Power Handle for a motor and control unit selectively attachable to various machines such as power mowers and snow plows.

The gist of the board’s reasoning is that POW-R-PRO is not sufficiently similar to either Professional or Power Handle as to be likely to cause confusion and there is nothing in the record to justify considering opposer’s two marks together, in order to make comparison with POW-R-PRO. The board also disagreed with appellant’s contention that appellee, by using the abbreviation PRO in its mark, has appropriated appellant’s entire mark Professional, merely adding thereto the equivalent of the descriptive word “power.”

In spite of the fact that appellant has managed to find thirteen' alleged errors in the board’s opinion, all of which it has argued in its brief and which we have considered, we find no error either in the board’s reasoning or in its decision.

The decision of the board is affirmed.

Affirmed.


author: LANE, Judge.

text:
    Application of Charles H. GREENE.
    Patent Appeal No. 8958.
    United States Court of Customs and Patent Appeals.
    July 19, 1973.
    John W. Melville, Gibson R. Yungblut, Melville, Strasser, Foster & Hoffman, Cincinnati, Ohio, attorneys of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This appeal is from the decision of the Board of Appeals sustaining the rejections of claims 1-7 of appellant’s application entitled “Drill Proof Plate for Safes and Method of Making Same.” We reverse.

Appellant’s invention is a “drill-proof plate structure” for safes, vaults, and the like. The structure comprises two or more plies of metallic sheet material that are “fused directly together to form a unitary structure with a barrier layer of hard particles embedded in the line or lines of fusion.” The sheets have a thickness from % to % inch and may be of various types but usually comprise a penetration-resistant hardened sheet that is inherently brittle in combination with a relatively soft steel that will bend and flex under impact to lend high impact strength to the composite structure. A “thin” uniform layer of abrasive particles such as tungsten carbide is sandwiched between the sheets and is “embedded in and interlocked with the fused surfaces of the steel sheets in an essentially irregular manner.”

Each of the claims on appeal is directed to the composite structure. Claim 1, the sole independent claim, reads as follows:

1. A plate structure comprising at least two metallic sheets, said sheets being fused directly together, a barrier layer, said barrier layer comprising discrete highly abrasive particles, said particles being uniformly dispersed and embedded in the line of fusion between said metallic sheets.

Claims 2-7 impose limitations not in issue in this appeal.

Claims 1-7 were rejected under 35 U.S.C. § 102 as anticipated by Schwarzkopf and alternatively under 35 U.S.C. § 103 as obvious from Schwarzkopf in view of Hawkins and Cottrell.

The board sustained the § 102 rejection, and additionally held as follows:

[I] f there are any differences between the plate structure disclosed by Schwarzkopf and that recited in the claims, which differences are not apparent to us, the differences are so slight as to be obvious, and therefore the rejected claims are unpatentable over that reference under 35 U.S.C. 103.
While we make no comment with respect to the Examiner’s rejection based upon the secondary references, since we believe the Schwarzkopf patent by itself is sufficient, we will also sustain the Examiner’s rejection based upon [Hawkins and Cottrell].

Schwarzkopf discloses a method of making a layered composite structure of one or more armor sheets. An intermediate layer of a powdery mixture of hard particles and “binder” material, such as soft pure iron, is sandwiched between the sheets to increase the resistance to penetration by a projectile. In forming the composite structure, a layer of the powdery mixture is deposited on one sheet and “the hard metal powder is spread uniformly over and pressed into the sheet” by heated rollers to give a “superficial mechanical uniting with [the] sheet.” An additional steel sheet is placed on the layer of powder mixture and the composite structure is again pressed between rollers. The structure is then subjected to a “sintering” operation described by Schwarzkopf as follows :

The temperature in [the heating] chamber * * * should be such that the initial hard metal mixture is sintered. Depending upon the nature of the binder, the sintering temperature in [the] chamber * * should be kept between about 1000 to 1350° C. [(1832 to 2462° F.)], and in any way substantially below the melting point of the armor steel sheet used, and above about 900° C.
During sintering of the binder, also diffusion or coalescing between the binder and adjacent surface layers of the sheets * * * occurs, securing a firm bond between the binder and thereby the hard metal layer * * * and those sheets.

Appellant contends that the Schwarzkopf disclosure fails to respond to two limitations present in all of the claims on appeal. Thus, appellant argues that Schwarzkopf does not disclose a structure in which the plates or sheets are “fused directly together” and in which the particles of the barrier layer are “embedded in the line of fusion between * * [the] sheets.” Rather, appellant urges, the armor plates of Schwarzkopf are joined together by the disclosed intermediate layer.

OPINION

In rejecting appellant’s arguments, the board made express reference to the methods of manufacture disclosed respectively by appellant and Schwarzkopf. We too have considered those methods, especially since the Schwarzkopf structure at the various points of juncture is not clear from the disclosure. We conclude that there is no indication that the structure as defined in appellant’s claims is achieved by Schwarzkopf and that the indications are to the contrary.

Appellant’s specification discloses that the sandwiched composite structure claimed is formed by heating it in the range of “about 2300° F” and then subjecting it to pressure. While the temperature range disclosed by appellant is encompassed by that disclosed by Schwarzkopf, the effects are disclosed to be different. As taught in Schwarzkopf, the temperature used for sintering is “substantially below the melting point of the armor steel sheet used * * *.”

Appellant discloses the use of a layer of borax adjacent the layer of carbide particles. Referring to the 2300-2400° F. heating range, appellant’s specification states:

[A]t this temperature range the borax acts to raise the temperature of the adjacent surfaces of the steel sheets to the melting point, whereby to permit fusion of the sheets to form a unitary plate structure.

It might well be that the carbide particles of Schwarzkopf are to some extent embedded in the armor plates by the heated rollers and that such embedding might increase during the sintering step. However, it is not apparent that the disclosed “diffusion and coalescing between the binder and adjacent surface layers of the sheets” as well as whatever embedding might occur is such that the adjacent surfaces of the sheets come in contact with each other or are “fused directly together” to form “a line of fusion.”

Given that there is no express teaching in Schwarzkopf of the structure defined in the claims and that the methods of making the respective structures involve clear differences in the effects of the heating steps on the sheets, the board was in error in finding the claimed subject matter anticipated by Schwarzkopf. Nor do we consider the differences between Schwarzkopf and the claimed structure either “slight” or obvious from that patent, at least in the absence of some evidence that one of ordinary skill in the art would have found it obvious to alter the Schwarzkopf method to effect fusion between the armor plates. We have carefully considered the Hawkins patent, which is directed to the formation of a composite welding rod, and the Cottrell patent, which discloses a method of making a cutting tool, but do not find that either or both of those patent disclosures provide the requisite evidence of obviousness. As noted above, the board did not comment on Hawkins and Cottrell, but rested on its conclusion that Schwarzkopf anticipates the claimed invention.

For the reasons set forth herein, the decision of the board is reversed.

Reversed.

      . Serial No. 659,828 filed June 8, 1967, which is said to be a continuation of Serial No. 395,127, filed September 9, 1964, now abandoned.

      . U. S. Patent No. 2,372,607 issued March 27, 1945.

      . U. S. Patent No. 1,977,128 issued October 16, 1934.

      . U. S. Patent No. 2,398,132 issued April 9, 1946.


text:
    Kent C. LAZO, Appellant, v. Tien C. TSO and George L. Steffens, Appellees.
    Patent Appeal No. 8946.
    United States Court of Customs and Patent Appeals.
    July 12, 1973.

      Richard C. Witte, Robert B. Aylor, Cincinnati, Ohio, Dugald S. McDougall, Chicago, Ill., attorneys of record, for appellant.
    Rubin Hoffman, Washington, D.C., attorney of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Patent Interferences, adhered to on reconsideration, awarding priority of invention of the count to the senior party, Tso et al. (Tso). Tso is involved on application serial No. 443,106, filed March 26, 1965. Lazo is involved on application serial No. 473,193, filed July 19, 1965. A third party, Findley et al., has not appealed the decision.

The board’s decision centered on the holding that Tso had prior conception of the process of the count. We affirm.

The Subject Matter

The sole count reads:

1. A method of inhibiting the growth of suckers in tobacco plants which comprises applying to said plants an effective amount of a saturated Cs to Cis alcohol.

“Suckers” are axillary buds which appear after tobacco plants have been topped and are undesirable because they reduce the energy available for growth.

The Board Decision

The board found as a fact that Tso had submitted a projected plan for research on sucker control (Tso Exhibit 1) on May 28, 1963 which included as materials to be tested:

Saturated and unsaturated long-chain aliphatic compounds, including primary, secondary and tertiary alcohols, related ketones, acids, and esters.

The board also found that a report of a trip by Tso to Emery Industries, Inc. in October 1963 (Tso Exhibit 3) included the statement that Emery was willing to supply various fatty acid derivatives for testing and also to “supply other derivatives of C-9 fatty acids such as alcohol, aldehyde, ethyl esters, and other related compounds in pint quantities for our evaluation in greenhouses as well as in the field.”

The record for Lazo, on the other hand, was found to establish that Lazo’s first activity came after reading an article in the Oil, Paint & Drug Reporter, published in December 1963, which described work done by Tso demonstrating effective sucker control with fatty acids and esters. The first written mention by Lazo of the use of alcohols in this area was in a letter to Tso on January 28, 1964 (Lazo Exhibit 3) wherein the belief was set forth that “some of the fatty alcohols might show promise * * * particularly the octyl and decyl fractions or the blend thereof.” At the same time samples were offered to Tso for evaluation at the United States Department of Agriculture (USDA) facilities.

It is agreed that the reduction to practice occurred in tests run at USDA in March and April of 1964 under the supervision of co-inventors Tso and Steffens and using the fatty alcohol samples supplied by Procter and Gamble.

On this record, the board concluded that

* * * at least by October 22, 1963, the date of the report * * * [Tso Exhibit 3] Tso et al. were in possession of the conception of the use of a saturated C-9 alcohol for inhibiting sucker growth on tobacco plants. The plan for research * * * [Tso Exhibit 1] and the testimony in connection therewith clearly show that Tso et al. contemplated the use of saturated long chain aliphatic alcohols for inhibiting suckers on tobacco and the report of Tso’s trip * * * specifically refers to C-9 fatty alcohol for this purpose. Whether Tso et al. made any attempt to obtain this or [any] other alcohol within the scope of alcohols recited in the count is not material to our conclusion as the testimony and above exhibits establish that Tso et al. were in possession of a prior conception of the process of the count.

Having held Tso to have been in possession of the conception prior to Lazo’s letter, the board sttaed:

[I]t cannot be said that a conception of the invention was first conveyed from Lazo to Tso et al. or that Tso derived the invention from Lazo.

Lazo’s claim that the work done at USDA was in effect a reduction to practice on his behalf was overruled:

[S]ince Tso et al. had the prior conception of the process of the count, experimental work carried out by them and their associates at USDA must necessarily be for their own benefit rather than for Lazo. The fact that P and G may have supplied alcohols that were used in the experiments carried out does not indicate that the work was for the benefit of Lazo or P and G. The source of the chemicals used cannot alone determine for whose benefit the work was done. Even if it were held that the experimental work was for the benefit of both Tso et al. and Lazo (a simultaneous reduction to practice) Lazo could not prevail since Tso et al. had the first conception.

OPINION

Appellant has raised issues of equity, contract and agency law, public policy and third party inventorship, as well as the basic issue of originality or derivation of the invention by Tso from Lazo. We limit our discussion, however, to the matter of first conception, which answers the question of priority before us.

Appellant contends that the two documents which formed the basis for the board’s award of prior conception of the count (the research plan and trip report) are “mere summaries of intended research, broad as all outdoors.” It is urged that such a generic disclosure without any guide indicating this particular selection cannot be construed as a conception of the narrow subject matter of the count.

We cannot agree with that analysis of these two documents. The research plan sets forth the basic concept of testing the inhibition of sucker growth with “saturated and unsaturated fatty acids and their derivatives” as well as the saturated and unsaturated long-chain aliphatic compounds noted by the board. Although many other naturally occurring compounds are included within the total disclosure of the plan, we think the two documents, and testimony pertinent thereto, provide the necessary evidence that Tso had conceived the subject matter of the count.

Tso’s testimony and his written request for authorization to visit Emery (Tso Exhibit 2) make it clear that he had already run tests using some fatty acid derivatives and obtained “encouraging results” by September 18, 1963. His trip was to learn more about the composition, properties, potential supply, etc., of the derivatives which had been provided by Emery. The report of a meeting with Emery personnel on October 14, 1963 states that “[a]mong the 26 fatty acid derivatives they supplied, we found that those materials with 8 to 12 carbons were most effective.” It goes on to say that “[a]n odd-numbered carbon material Emery supplied * * * and very promising is found to be a 9-carbon compound.” In a discussion of sources of supply there is a reference to the “C-9 compound monobasic saturated [our emphasis] pelargonio acid [which] is an ozonation product of naturally occurring fats * * Finally we find the offer to supply “other derivatives of C-9 fatty acids such as alcohol, aldehyde, ethyl esters * * Tso’s testimony with respect to this trip included the statement:

They supplied to us fatty esters to start with. From that discussion we knew that the fatty esters in the range of C-8 to C-12 area was quite effective. So automatically our discussion led to the subject of fatty alcohols, and their interest, of course, particularly they have, as I understand, the C-9 material at that time, they have C-9 alcohol.

Other testimony indicates that Tso had also tested fatty acids but had encountered problems in that “acid was burning the tobacco leaf * *

Hence we find no error in the board’s determination that Tso had conceived of the use of a saturated C-9 alcohol for inhibiting sucker growth by October 22, 1963. The evidence establishes that Tso not only had developed a master plan which contemplated future testing of such a compound but also had carried out research with related fatty acid derivatives and obtained encouraging results. The conclusive indication in the direction of the fatty alcohols per se was the discussion at Emery.

Having determined that it was Tso who had the prior conception, we are necessarily led to agree with the board’s holding that the reduction to practice must inure to the benefit of Tso. Cf. Whittier v. Borchardt, 154 F.2d 522, 33 CCPA 1023 (1946). As pointed out by the board, this case is readily distinguishable from the situation in Applegate v. Scherer, 332 F.2d 571, 51 CCPA 1416 (1964), wherein Scherer had the thought and thus was credited with conception of the invention and Applegate merely ran the test necessary for reduction to practice after communication of the invention by Scherer.

The board dismissed the claim of third party inventorship as not ancillary to priority. Swain v. Mallory, 329 F.2d 982, 51 CCPA 1242 (1964); Mortsell v. Laurila, 301 F.2d 947, 49 CCPA 1028 (1962). We find no error in that action.

Accordingly, the decision of the board is affirmed.

Affirmed.

      . Tso et al. were employees of the United States Department of Agriculture and Lazo was an employee of Procter and Gamble Company.