wherein R is independently selected from the group consisting of hydrogen, alipathic, cycloaliphatic and aryl radicals, and R. is independently selected from the group consisting of aliphatic, cycloaliphatic and aryl radicals.

Molotsky states generally that these compounds are useful

as intermediate chemicals, as insecticides, in resin production, as fungicides, as vulcanizing agents, as accelerators for the vulcanization of rubber, and as solvents.

Of the compounds specifically disclosed by Molotsky the one structurally most similar to those claimed by appellant is the ethyl ester of 4,5,6,a,a,a-hexachloro-3-toluic acid which differs in structure from appellant's acid, supra, only in that the former has COOC,H, and the latter-COOH in the 3-position. Thus, Molotsky's compound is the ethyl ester of appellant's free acid. Molotsky also discloses 2,3-dicarboxy4,5,6,a,a,a-hexachlorotoluene which is a free acid differing from appellant's acid only in having carboxyl groups in both the 2- and 3-positions, rather than just the 3-position.

The French patent discloses compounds which the board characterized as "analogs of the claimed anilide and acid chloride" (emphasis added), the claimed compounds differing therefrom in that they contain two chlorine atoms in 4- and 5-positions whereas the French patent compounds do not. With respect to the utility of the disclosed compounds, the French patent states:

The chlorides of benzene carboxylic acids containing trichloromethyl groups prepared according to the present invention behave as true acid chlorides: they yield esters, anilides, etc., and are important intermediate products in the preparation of dyes, as well as means for the extermination of noxious animals, treatment of plant diseases, etc. [Emphasis added.]

The examiner was of the opinion that given Molotsky's disclosure of the ethyl ester of 4,5,6,a,a,a-hexachloro-3-toluic acid "the concept of the acid would be obvious in the absence of unobvious properties not possessed by the ester ***." The board agreed, adding that Molotsky discloses both acid and ester derivatives of 4,5,6,a,a,a-hexachlorotoluene (although not the specific acid claimed by appellant).

Taking a similar position with respect to the French patent, the examiner noted that the compounds disclosed in this reference and the anilide and acid chloride claimed here differ only in the presence of two additional chlorines in the latter pair and that the compounds

statement of either of the appealed rejections and although this fact was pointed out in appellant's brief below, the board approved of their use by the examiner "as suggesting that [appellant's] compounds would exert herbicidal action" and characterizing this as use in a "minor capacity" (emphasis added) to "further support the rejection." Appellant's complaint seems to be justified, and if we did not find the rejections based solely on Molotsky and the French patent to be sound, we might well feel constrained to reverse the decision of the board. Where a reference is relied on to support a rejection, whether or not in a "minor capacity," there would appear to be no excuse for not positively including the reference in the statement of the rejection.

of the patent are disclosed as being useful for "the treatment of plant diseases." The board added that appellant did not appear to challenge the prima facie obviousness of the claimed structures and noted that the French patent suggests the possibility of polychlorination of the disclosed compounds.

Appellant argues that, notwithstanding Molotsky's utility disclosure quoted above, this reference does not teach which of the several utilities mentioned is possessed by the ethyl ester in question or whether all are possessed by it. He also argues that mention of "treatment of plant diseases" in the utility disclosure of the French patent shows that the compounds disclosed in this reference

have a utility opposite to that of the utility possessed by appellant's compounds; whereas they cure plant diseases, appellant's compounds kill plants.

At the outset, we note that appellant has not attempted to explain what the phrase "treatment of plant diseases" would imply to one skilled in the art. He has merely asserted that such use is "contradistinguished" from and "antithetical" to the herbicidal use of the claimed compounds. He has in no way supported his suggestion that compounds useful for the "treatment of plant diseases" (whatever that means) would be expected, because of that usefulness, not to be useful as herbicides when applied, perhaps, in greater quantities or to specific plants. On the face of it, "treatment of plant diseases" could mean usefulness in controlling plant-infesting organisms rather than usefulness in obtaining a direct beneficial effect on the plant per se. We are thus not persuaded that herbicidal properties are "contraindicated" by the French patent.1

Having considered, on the one hand, the very close structural similarities of the claimed compounds and the reference compounds, the utility disclosures of the references, and the suggestion of polychlorination in the French patent, and, on the other hand, the apparent unobviousness of the utility of the claimed compounds as herbicides, we find that a prima facie case of obviousness has been made out by the examiner.

Appellant attempts to overcome this prima facie case of obviousness by arguing the following:

Even if said references sufficed to render obvious the structure of appellant's compounds, they, as a matter of law, would not render obvious the compounds themselves (and all the properties that inhere therein) under 35 USC 103; for the herbicidal utility of these compounds is contraindicated by these references. In re Lambooy, 49 CCPA 985, 300 F. 2d 950, 133 USPQ 270 (1962) and In re Petering and Fall, 49 CCPA 993, 301 F. 2d 676, 133 USPQ 275 (1962) cited with approval in In re Papesch, 50 CCPA 1084, 315 F. 2d 381, 137 USPQ 43 (1963);

This, of course, is not to say that herbicidal properties are indicated by the French patent either.

In re Huellmantel, 51 CCPA 845, 324 F. 2d 998, 139 USPQ 496 (1963); In re Luvisi and Nohejl, 52 CCPA 1063, 342 F. 2d 102, 144 USPQ 646 (1965); and In re Ruschig, 52 CCPA 1238, 343 F. 2d 965, 145 USPQ 274 (1965). [Emphasis added.]

[2] Reflection on this contention shows it to be appellant's position that if his compounds possess an advantageous property which is unobvious (unexpected) in view of the disclosures of the prior art references, then the prima facie case of obviousness necessarily has been overcome and his compounds must be held to be unobvious. None of the cited cases, however, explicitly or implicitly supports this proposition. In each, a prima facie case of obviousness was conceded or held to have been established and applicant's proofs, submitted to overcome that prima facie case, related not merely to unexpected properties, but rather to unexpected differences in properties,3 i.e., to actual differences in the properties of the prior art compounds and the properties of the compounds involved in the appealed claims. Such actual differences in properties are required to overcome a prima facie case of obviousness because the prima facie case, at least to a major extent, is based on the expectation that compounds which are very similar in structure will have similar properties. Therefore, to overcome the prima facie case, it must be shown that the expectation on which it is based was in fact unsound-as by showing that there are substantial, actual differences in properties.

Inasmuch as the record here is silent as to how the reference compounds and the claimed compounds actually differ in properties, if at all, appellant has failed to overcome the examiner's prima facie case of obviousness."

The decision of the board is affirmed.

429 F. 2d 476; 166 USPQ 428

ADRIAN P. BROKAW v. CHARLES B. VOGEL (No. 8275)

PATENTS

1. INTERFERENCE-PRIORITY.

Concealment of invention barring patent is found where applicant delayed more than five years in filing application after actually reducing invention to practice and where applicant had knowledge of opponent's patent when he

5 As used in these cases, the meaning of "differences in properties" has included signficant differences in degree of the same property amounting to marked superiority.

It should be noted, however, that in considering whether a prima facie case of obviousness had been made out we did take into account, inter alia, not only the differences between the structures of the prior art compounds and those claimed, but also the differences in the properties disclosed in the prior art to be possessed by the former and the properties which appellant found to be possessed by the latter, the latter properties being considered notwithstanding appellant's failure to establish actual differences in properties.

filed application; it is not necessary to show that applicant had a specific intent to suppress or conceal, it being sufficient that applicant took no step during period of over five years to make invention available to public and that there is nothing to excuse his inaction.

2. INTERFERENCE-PRIORITY

Question of suppression and concealment of invention is not one of fact, but whether there was suppression or concealment under 35 U.S.C. 102(g) is an ultimate conclusion of law, based on other facts of record, just as "priority" is an ultimate conclusion of law.

3. INTERFERENCE-PRIORITY.

Mason v. Hepburn principle is not only to be invoked in extreme cases; it is a healthy rule to be invoked in the public interest whenever the fact situation warrants it; while law may abhor a forfeiture, principle is not a forfeiture in the true sense; rather, it is a rule according to which the patent right goes to the most deserving; realistically, it is a forfeiture by the de facto first inventor of the right to rely on his earlier reduction to practice.

United States Court of Customs and Patent Appeals, August 6, 1970 Appeal From Patent Office, Interference No. 94,142

[Reversed]

Frank S. Troidl, attorney of record, for appellant. Douglas M. Clarkson, Robert W. Mayer, William E. Johnson, Jr., of counsel.

Theodore E. Bieber for appellee.

[Oral argument February 4, 1970 by Mr. Johnson and Mr. Bieber]

Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and FORD, Judge, sitting by designation

RICH, Judge, delivered the opinion of the court:

1

This appeal is from the decision of the Board of Patent Interferences in interference No. 94,142 involving Brokaw patent No. 3,019,413, for “Discriminating Interval Time Computer for Acoustic Well Logging Systems," issued January 30, 1962, on application serial No. 806,586, filed April 15, 1959, and Vogel application serial No. 253,682, filed January 24, 1963, entitled "Well Logging." The appeal is directed only to count 1, which was awarded to Vogel, no appeal having been taken as to a second count which was awarded to Brokaw. We

reverse.

The subject matter is an electronic computer system for use in an acoustical type system for logging bore holes in drilling for oil. The nature of the system appears from the count, which reads:

1. A computer in an acoustic well logging system for discriminating between valid signal information represented as time intervals between a pair of accepted pulses and invalid signal information represented as time intervals between

1 Consisting of Boys, Williams, and Capelli, Examiners of Interferences, opinion by Boys. The real parties in interest are Lane-Wells Division of Dresser Industries, Inc., assignee of Brokaw, and Shell Development Company, assignee of Vogel.

a pair of rejected pulses, comprising means to accept a pair of pulses as valid signal pulses when the pulses occur within a predetermined time range following a synchronizing pulse, means generating a function pulse in response to said pair of pulses, means for storing the valid signal information in response to the function pulse, and utilization means for measuring the stored valid signal information.

Brokaw took no testimony and relied on his filing date. The board found that Vogel had proved by his evidence an actual reduction to practice of a logging system using the subject matter of the count by November 27, 1957, well prior to Brokaw's filing date of April 15, 1959. Brokaw does not challenge that finding.

The sole issue arises from the board's ruling against Brokaw's charge that Vogel forfeited his right to a patent on count 1, as against Brokaw, because of delay in filing his application after actual reduction to practice and the attendant circumstances under the doctrine enunciated in Mason v. Hepburn, 13 App. D.C. 86 (D.C. Cir., 1898), and applied by this court in Woofter v. Carlson, 54 CCPA 917, 367 F. 2d 436, 151 USPQ 407 (1966), and Engelhardt v. Judd, 54 CCPA 865, 369 F. 2d 408, 151 USPQ 732 (1966). The Mason v. Hepburn doctrine now finds statutory basis in 35 USC 102(g), which specifies, as one ground for denying a patent, that

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. Here Vogel is a de facto first inventor, having concededly made an actual reduction to practice before the filing date on which Brokaw relies. He is "another" who made the invention in this country before Brokaw did on which basis he can defeat Brokaw's right to a patent but only if, under section 102(g), he did not abandon, suppress, or conceal his invention. On the facts of this case, we are not concerned with abandonment. The true issue is whether Vogel suppressed or concealed his prior invention so as to have forfeited his right to a patent as against the later inventor Brokaw. Under Mason v. Hepburn, the question is whether Brokaw is to be considered the "first" inventor in law, though, de facto, he is a second inventor.

Specifically, Brokaw contends that:

** ** * (1) the evidence so clearly establishes that Vogel abandoned, suppressed or concealed his invention within the meaning of 35 U.S.C. § 102(g) that any additional proof that Vogel was "spurred" into action by the issuance of the Brokaw patent is superfluous and (2) if such additional positive proof of "spurring" is required by the law, the record clearly shows more than ample evidence from which it can be inferred that Vogel was "spurred" into action by actual knowledge of the Brokaw patent.