328,463, filed December 6, 1963, entitled "Methoxy-Substituted Cyanophenyl Ester Derivatives of Phosphorus Acids." Four specific claims are allowed. We reverse.

The single claim on appeal, a compound claim directed to a genus of methoxy-cyanophenyl ester derivatives of various phosphorus-containing acids, reads as follows:

where R and R' are members selected from the group consisting of lower alkyl, chloro-substituted lower alkyl, lower alkoxy, phenyl, and phenoxy; and X is a member selected from the group consisting of oxygen and sulfur.

The skew lines emanating from the benzene ring and connecting the -CN ("cyano") and -OCH, ("methoxy") radicals are accepted chemical shorthand indicating that these substituents may take any relative position of isomerization. The application indicates that the compounds are useful as pest-control agents for "lower forms of life customarily controlled by chemical means."

The sole reference relied on is:

Belgian patent (Lorenz) –

627, 817 July 31, 1963

Claim 1 was rejected by the examiner under 35 U.S.C. 102(a) "as being anticipated by the Belgium patent to Lorenz which discloses 2methoxy-6-cyanophenyl esters which are within the methoxy-cyanophenyl genus of the instantly claimed phosphorus acid esters" (emphasis quoted). Lorenz discloses no utility for the 2-methoxy-6cyanophenyl esters.1

Appellants do not dispute that the Belgian patent discloses compounds within the scope of the rejected claim. Rather, they contend that two Rule 131 affidavits which they have filed show "completion of the invention defined by claim 1" or at least show possession of "so much of the invention as to encompass the reference disclosure" prior to the effective date of Lorenz. The first affidavit shows that appellants reduced to practice four compounds within the scope of the rejected claim. Each of the four compounds is a 2-methoxy-4-cyanophenyl ester of a phosphorus-containing acid. Esters of phosphoric, phosphonic,

1 The board stated that Lorenz does disclose a utility for the compounds, but the solicitor tacitly concedes that this was error.

and thiophosphonic acids are represented. On the basis of this affidavit the examiner allowed claims to species for which prior reductions to practice had been shown.

The parties seem to agree that insofar as the issue in this appeal is concerned only substituents on the benzene ring need be considered. Thus, Lorenz can be treated as disclosing a single 2-methoxy-6-cyanophenyl ester, appellants as having reduced to practice a single 2methoxy-4-cyanophenyl ester, and claim 1 as being directed to a genus of methoxy-cyanophenyl esters differing only in the positioning of the methoxy and cyano groups on the benzene ring.

The second affidavit reads in relevant part as follows:

We, Edward N. Walsh and Herbert H. Royse, being duly sworn, depose and say:

That prior to July, 1963, we conceived in the United States the invention in its generic nature as evidenced by the reproduced invention disclosure attached hereto.

That prior to July, 1963, as seen in the reproduced invention disclosure the generic nature of the invention is defined as

=

R, and R, alkyl, alkoxy, dialkylamide, aryl, haloalkl, haloaryl.["]

Similarly, the utility is ascribed as effective as pesticides.

The document attached to this affidavit is a form entitled "Invention Disclosure." Following each of five captions ("Date," "Submitted by:," "Subject:," "Nature of Invention:," and "Utility:") space is provided for the appropriate information. The date has been blocked out as is customary under Rule 131 practice. The information, which is handwritten, indicates that the disclosure was submitted by "Edward N. Walsh," one of the appellants. The subject was "Organophosphorus Compounds-Pesticides," the nature of the invention is as quoted in the second affidavit, and the utility caption is followed by the statement "Effective as pesticides."

Summing up to this point, appellants claim a genus of methoxycyanophenyl esters without restriction on the positioning of the methoxy and cyano groups. Lorenz discloses a 2-methoxy-6-cyanophenyl ester encompassed by appellants' claim. And prior to the effective date

of Lorenz, appellants reduced to practice a 2-methoxy-4-cyanophenyl ester and conceived of their invention as being a genus of methoxycyanophenyl esters (and a utility therefor) which encompasses the compound which they had then reduced to practice and the compound which was subsequently to be disclosed by Lorenz. We are thus presented with a question of "indirect antedation" as that concept is developed in In re Da Fano, 55 CCPA 1134, 392 F.2d 280, 157 USPQ 192 (1968); In re Rainer, 55 CCPA 853, 390 F.2d 771, 156 USPQ 334 (1968); and In re Clarke, 53 CCPA 954, 356 F.2d 987, 148 USPQ 665 (1966). The solicitor contends that this case is most nearly like Clarke, while appellants contend that it is most nearly like Da Fano. In Da Fano, the differences between the two cases were explained as follows (emphasis quoted):

In Clarke, we considered the problem of a species reduction to practice in a Rule 131 affidavit being used to overcome a reference which disclosed a different species. We set forth, as a test for the adequacy of the affidavit, a standard of 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. We felt then, as we do now, that the number of independent species actually reduced to practice, while certainly relevant as indicating the breadth ascribed to the invention by the inventor, is not necessarily determinative. We indicated in Clarke that in an appropriate case a single species could be sufficient to antedate indirectly. A fortiori, a single species could be sufficient to antedate a genus.

In Clarke, we felt that the appellant had failed to show that ne ascribed to his invention any broader scope than that represented in his actual reduction to practice. We stated:

"While other members of the alkyl series, or even the branched-chain alnyl series, might be said to be structurally evident or prima facie obvious to one skilled in the art upon preparation of the methyl species, the evidence is inadequate to show that appellant considered any other members of those series to be part of the invention. * * *"

The affidavit in this case differs from that in Clarke in that it shows that appellant did have an appreciation of the fact that resin-soluble copper compounds broadly would yield the desired results. The two memoranda are explicit on this point. Mere prior conception of the genus will not suffice, however, as was pointed out in Clarke. It is necessary that the species which were reduced to practice provide an adequate basic for inferring that the invention has generic applicability. In re Rainer * * *.

It is clear from the record that the inventor, attributing the novel properties of the copper naphthenate solely to the presence of copper ion in the resin, inferred that other resin-soluble copper salts would behave similarly. We find nothing in this record to indicate that this inference was unreasonable, and subsequent developments appear to indicate that it was in fact well founded. This appears to be a situation where a single species reduction to practice is adequate to overcome a reference showing of a genus.

Here it is clear that appellants considered their invention to be a

generic one; we thus have a Da Fano rather than Clarke situation and the inquiry we are left with is whether the single species reduced to practice by appellants provided a reasonable basis for inferring that the position isomers of that species would also be useful as pesticides. As in Da Fano, we "find nothing in this record to indicate that this inference was unreasonable, and subsequent developments appear to indicate that it was in fact well founded."

The decision of the board is accordingly reversed.

424 F.2d 1114; 165 USPQ 438

In re Joachim Stroszynski and Erwin Grimm (No. 8254)

PATENTS

1. COURT OF CUSTOMS AND PATENT APPEALS-ISSUES DETERMINED EX PARTE PATENT CASES

Board stated that it did not consider secondary references since their features were conceded as obvious by lack of argument to the contrary; since applicants have not included in record any amendments or briefs below, in which they allegedly criticized references court assumes that applicants tacitly conceded relevancy of references; to permit applicants to criticize references before court would encourage less than full development of issues when application is at examination stage; hence, court does not give separate consideration to secondary references.

United States Court of Customs and Patent Appeals, April 30, 1970 APPEAL from Patent Office, Serial No. 411,044

[Affirmed]

Bryan and Butram, Roy W. Butram, James E. Bryan, attorneys of record, for appellants.

Joseph Schimmel for the Commissioner of Patents, Lutrelle F. Parker, of counsel.

[Oral argument January 8, 1970 by Mr. Parker; appellants submit on brief]

Before RICH, ALMOND, BALDWIN, LANE, A88ociate Judges, and MCMANUS, Judge, sitting by designation.

RICH, Judge, delivered the opinion of the court.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 9, 10, and 12-22 of application serial No. 411,044, filed November 13, 1964, entitled "Treatment of Material In Web Form."

The Invention

The claimed invention is a jet dryer for treating and drying an aerodynamically transported web of material with a gas or vapor. Appellants' specification states that the expression "areodynamically transported" is used to indicate that the web of material is supported in the treatment zone solely by means of jets of the gas or vapor, that is, without mechanical aid. Figs. 1 and 4 from the application drawings are illustrative:

Appellants' Drawings

FIG.I..

FIG. 4

Figs. 1 and 4 are, respectively, a sectional view in elevation and a perspective view of a number of nozzle assemblies. The trough-shaped units 2 are disposed opposite a web of material at 1 in a manner such that the open and closed ends face the web alternately and such that the sides of adjacent units form pairs of slit-shaped nozzles 5 inclined toward each other. Units 4 which have their open ends facing the web also serve as exhaust channels. Ordinarily, a second series of nozzle