Jr\
`
`THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
`
`The opinion in support of the decision being entered today
`(1) was not written for publication in a law journal and
`(2)
`is not binding precedent of the Board.
`
`Paper No. 122
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`;..2.!4ss.—71a;.o=~_...:;__.. .....
`
`'
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`*
`
`MAELEQ
`
`APR
`
`6 1995
`
`SOMPONG WATTANASIN,
`
`Junior Party,‘
`
`v.
`
`WW&IMjfHCE
`BOARDO§PAIENTAPPEALS
`ANQIMTERFERENCES
`
`IWASAKI,
`YOSHIHIRO FUJIKAWA, MIKIO SUZUKI, HIROSHI
`MITSUAKI SAKASHITA and MASAKI KITAHARA,
`
`Senior Party.2
`
`Patent Interference No. 102,648
`
`FINAL HEARING: November 22, 1994
`
`Before CALVERT, Vice Chief Administrative Patent Judge, and
`SOFOCLEOUS and DOWNEY, Administrative Patent Judges.
`
`SOFOCLEOUS, Administrative Patent Judge.
`
`‘ Application 07/498,301, filed March 23, 1990. Accorded
`the benefit of U.S. Application 07/318,773, filed March 3, 1989,
`now abandoned.
`
`2 Application 07/233,752, filed August 19, 1988. Accorded
`‘
`the benefit of Japan Applications 207224, filed August 20, 1987;
`15585, filed January 26, 1988; and 193606, filed August 3, 1988.
`Assignors to Nissan Chemical Industries Ltd.
`
`Mylan Exhibit 1042, Page 1
`
`Mylan Exhibit 1042, Page 1
`
`
`
`THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
`
`The opinion in support of the decision being entered today
`(1) was not written for publication in a law journal and
`(2)
`is not binding precedent of the Board.
`
`Paper No. 122
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`;..2.!4ss.—71a;.o=~_...:;__.. .....
`
`'
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`*
`
`MAELEQ
`
`APR
`
`6 1995
`
`SOMPONG WATTANASIN,
`
`Junior Party,‘
`
`v.
`
`WW&IMjfHCE
`BOARDO§PAIENTAPPEALS
`ANQIMTERFERENCES
`
`IWASAKI,
`YOSHIHIRO FUJIKAWA, MIKIO SUZUKI, HIROSHI
`MITSUAKI SAKASHITA and MASAKI KITAHARA,
`
`Senior Party.2
`
`Patent Interference No. 102,648
`
`FINAL HEARING: November 22, 1994
`
`Before CALVERT, Vice Chief Administrative Patent Judge, and
`SOFOCLEOUS and DOWNEY, Administrative Patent Judges.
`
`SOFOCLEOUS, Administrative Patent Judge.
`
`‘ Application 07/498,301, filed March 23, 1990. Accorded
`the benefit of U.S. Application 07/318,773, filed March 3, 1989,
`now abandoned.
`
`2 Application 07/233,752, filed August 19, 1988. Accorded
`‘
`the benefit of Japan Applications 207224, filed August 20, 1987;
`15585, filed January 26, 1988; and 193606, filed August 3, 1988.
`Assignors to Nissan Chemical Industries Ltd.
`
`Mylan Exhibit 1042, Page 1
`
`Mylan Exhibit 1042, Page 1
`
`
`
`Interference No. 102,648
`
`BEQQEST FOR RECONSIDERATION
`
`On February 28, 1995, Fujikawa et al.
`
`(hereinafter
`
`"Fujikawa") filed a request for reconsideration (Paper No. 120)
`
`of our decision of January 31, 1995. Wattanasin has filed a
`
`reply (Paper No. 121)
`
`thereto.
`
`The request for reconsideration was filed pursuant to
`
`37 C.F.R.
`
`§ 1.658(b), which requires that a request shall specify
`
`with particularity the points believed to have been
`
`misapprehended or overlooked in rendering the decision. We have
`
`reviewed our decision in light of those arguments and are not
`
`persuaded that we overlooked or misapprehended any matters.
`
`The request urges that we overlooked three matters
`
`pertaining to this interference. These matters are addressed
`
`below.
`
`YI
`
`‘The first matter concerns whether the Wattanasin
`
`application contains a written description for proposed claims 11
`
`and 12, which are directed to a limited class of compounds where
`
`R is cyclopropyl.
`
`In our decision, we agreed with the
`
`Administrative Patent Judge (APJ)
`
`that the application does not
`
`contain a written description for these claims and that the APJ
`
`had properly denied Fujikawa's motion to add two proposed counts.
`
`At page 9 of our decision, we said, "It is clear from the
`
`foregoing that the application does not describe ipsis verbis the
`
`Mylan Exhibit 1042, Page 2
`
`
`
`
`
`Mylan Exhibit 1042, Page 2
`
`
`
`Interference No. 102,648
`
`compounds of proposed claims 11 and 12 where R is cyclopropyl."
`
`Fujikawa urges that this statement is in error and contends that
`
`we overlooked the fact that the application contains a disclosure
`
`of cyclopropyl, since the application teaches that each of R and
`
`R)can be QM cycloalkyl.
`
`Fujikawa states that "Wattanasin has
`
`not contested, and the Board no where indicates,
`
`that any of the
`
`remaining identities recited in claims 11 and 12 are not
`
`described .
`
`.
`
`." (request, page 4).
`
`We have reviewed our decision and find that we did not
`
`overlook the matter complained of.
`
`On page 9 of our decision, we
`
`stated that "the Wattanasin application would not reasonably lead
`
`one of ordinary skill to the compounds of claims 11 and 12 where
`
`R is cyclopropyl" (emphasis added).
`
`On pages 10 and 11 of our
`
`decision, we explained our position and stated,
`
`in part, as
`
`follows:
`
`The Wattanasin application does not disclose any
`compound where R is C¥,cycloalkyl, much less
`cyclopropyl. Rather, cyclopropyl is merely one moiety
`embraced by Cy,cycloalkyl which is among a myriad of
`possibilities for either R or Kodisclosed in the
`application on page 1,
`lines 1 to 5. Further,
`the
`application at page 4,
`lines 26 to 34, lists its
`preferred compounds. None of the listed preferred
`compounds includes cyclopropyl or even CM cycloalkyl
`in the R position.
`(Page 10 of our decision.)
`
`Thus we did not overlook the matter since we specifically
`
`acknowledged that the Wattanasin application describes cyclopropyl as
`
`being a possible moiety for the compounds described therein.
`
`Mylan Exhibit 1042, Page 3
`
`
`
`Mylan Exhibit 1042, Page 3
`
`
`
`Interference No. 102,648
`
`Proposed claims 11 and 12 describe only four compounds out
`
`of the thousands of compounds embraced by the generic description of
`
`the Wattanasin application.
`
`See page 8 of our decision which sets
`
`forth Wattanasin’s disclosure appearing on page 1,
`
`lines 1 to 14 of
`
`his application.
`
`To obtain any one of these four compounds, one
`
`skilled in the art must fortuitousily pick and choose from among the
`
`nine different variables, i.e., R, R2 E9, RR I9, Rfl 13, X and Z,
`
`the
`
`specific moieties including 4~flurophenyl as RD and cyclopropyl as R.
`
`As we noted in our decision,
`
`the application provides no blazemarks
`
`or any motivation to guide one skilled in the art to these specific
`
`moieties in order to obtain any one of these four compounds.
`
`In
`
`support of our position, we cited,
`
`inter alia,
`
`In re Rushig, 379 F.2d
`
`990, 154 USPQ 118 (CCPA 1967), wherein the Court stated,
`
`id. at 994,
`
`154 USPQ at 122:
`
`Specific claims to single compounds require
`reasonably specific supporting disclosure and
`while we agree with the appellants, as the board
`did,
`that naming is not essential, something
`more than the disclosure of a class of 1000, or
`100, or even 48, compounds is required. Surely,
`given time, a chemist could name (especially
`with the aid of a computer) all of the half
`million compounds within the scope of the
`broadest claim, which claim is supported by the
`broad disclosure. This does not constitute
`support for each compound individually when
`separately claimed.
`[Emphasis original.)
`
`As we noted in our decision,
`
`this principle is equally applicable to
`
`the situation here where the proposed claims are directed to four
`
`specific compounds.
`
`Thus we did not overlook this matter.
`
`Mylan Exhibit 1042, Page 4
`
`
`
`Mylan Exhibit 1042, Page 4
`
`
`
`Interference No. 102,648
`
`II
`
`The second matter concerns Fujikawa’s motion to suppress.
`
`The motion requested that we deny consideration of certain portions
`
`of Engstrom's declaration and his supplemental declaration insofar as
`
`the declarations rely upon a computer-generated summary to obtain the
`
`EDm values.
`
`On page 22 and 23 of our decision, we denied the motion
`
`to suppress and addressed the substance of the motion insofar as it
`
`urged that we deny consideration to the testimony concerning the
`
`computer—generated summary. We did not explicitly discuss the motion
`
`with regard to an error pointed out by Wattanasin, an error which we
`
`acknowledged in footnote 3 on page 20 of our decision, with respect
`
`to the switching the EDW Values for compounds 64-933 and 64-935.
`
`Fujikawa now urges that we overlooked the fact that the
`
`motion to suppress also urged that the supplemental declaration was
`
`not timely submitted, was submitted belatedly without an explanation
`
`Aof good cause or an identification of how the error concerning
`
`switching the EDw values for compounds 64-933 and 64-935 had
`
`occurred. However,
`
`in denying the motion, we implicitly agreed with
`
`Wattanasin’s opposition that the error which we noted in footnote 3
`
`should be corrected.
`
`The correction did not in any way alter the
`
`substance of Engstrom’s testimony and Fujikawa’s objection did not in
`
`any way show that the correction should not have been made or show
`
`i any undue prejudice inuring to him by our permitting Wattanasin to
`
`Mylan Exhibit 1042, Page 5
`
`
`
`Mylan Exhibit 1042, Page 5
`
`
`
`Interference No. 102,648
`
`correct the error. _f. Gunn V. Bosch, 181 USPQ 758, 759 (Bd.Pat.Int.
`
`1973).
`
`Thus we did not overlook the foregoing matter.
`
`III
`
`The third matter concerns the issue of suppression or
`
`concealment.
`
`Fujikawa asserts that we overlooked his arguments
`
`stressing direct and indirect evidence of suppression and concealment
`
`on the part of Wattanasin and that Wattanasin’s assignee took
`
`deliberate action to prevent publication of information with regard
`
`to the invention. Contrary to any assertions in the request, we did
`
`not overlook any of Fujikawa’s arguments concerning suppression.
`
`As we noted on pages 18 and 19 of our decision, Wattanasin
`
`could not rely upon any experimental work completed by June 13, 1985
`
`as an actual reduction to practice because of the failure of the
`
`experimental work to meet all the limitations of the count. However,
`
`we found that during Wattanasin’s second phase of activity actual
`
`‘reduction to practice had occurred by December 9, 1987 (the date of
`
`the in vivo testing of compound 64-935).
`
`The hiatus in time from the
`
`date for actual reduction to practice to Wattanasin’s filing date is
`
`approximately fifteen months.
`
`On pages 25 and 26 of our decision, we
`
`found that this hiatus is insufficient to raise the inference of
`
`suppression.
`
`At page 9 of the request, Fujikawa states that Sandoz,
`
`Wattanasin’s assignee, "took deliberate action to prevent publication
`
`of information with regard to the invention" (emphasis added), that
`
`Mylan Exhibit 1042, Page 6
`
`
`
`Mylan Exhibit 1042, Page 6
`
`
`
`Interference No. 102,648
`
`Wattanasin "had even been told not to publish information regarding
`
`his invention even after the date of conception found by the Board
`
`herein, and indeed, well after the actual reduction to practice
`
`"
`
`(emphasis added), and that the "Patent Committee again and
`
`again and again decided not to make a decision whether to proceed
`
`with the filing or not.
`
`.
`
`.
`
`." At page 10 of the request, Fujikawa
`
`urges that we should have measured the hiatus from Wattanasin's date
`
`of conception and not from the date of actual reduction to practice.
`
`These positions are not well taken.
`
`It is well settled that without
`
`an actual reduction to practice,
`
`there is no invention which can be
`
`abandoned, suppressed or concealed. Correge v. Murphy, 705 F.2d
`
`1326, 217 USPQ 753 (Fed.Cir. 1983) and Peeler V. Miller, 535 F.2d
`
`647, 190 USPQ 117 (CCPA 1976).
`
`Further at page 10 of the request, Fujikawa urges that this
`
`is a classic case of suppression because Wattanasin was spurred into
`
`‘filing his application by the issuance of the Picard patent. As we
`
`noted on page 12 of our decision, Picard is not involved in this
`
`interference, having filed,
`
`through counsel, a request for an adverse
`
`judgment. This interference is between Wattanasin and Fujikawa and
`
`any action taken with respect to the Picard patent is not relevant to
`
`the question of priority between Wattanasin and Fujikawa.
`
`Mylan Exhibit 1042, Page 7
`
`
`
`Mylan Exhibit 1042, Page 7
`
`
`
`Interference No. 102,648
`
`For the foregoing reasons,
`
`the request for reconsideration
`
`is granted to the extent that we have reviewed our decision and is
`
`denied insofar as it seeks any modification thereof.
`
`BOARD OF PATENT
`APPEALS AND
`
`INTERFERENCES
`
`/IAN A. CALVERT, Vice Chief
`Administrative Patent Judge )
`)
`
`) ) )
`
`Administrative Patent Judge )
`)
`
`) ) ) )
`
`
`
`[J
`
`{J
`
`DOWNEY
`MARY
`Administrative Patlnt Judge
`
`svt
`
`Mylan Exhibit 1042, Page 8
`
`
`
`Mylan Exhibit 1042, Page 8
`
`
`
`Interference No. 102,648
`
`Gerald D. Sharkin
`Sandoz Corp.
`59 Route 10
`E. Hanover, NJ
`
`07936
`
`Oblon, Fisher, Spivak,
`Mcclelland & Maier
`1755 S. Jefferson Davis Hwy.
`Crystal Square Five—Ste. 400
`Arlington, VA 22202
`
`Mylan Exhibit 1042, Page 9
`
`
`
`Mylan Exhibit 1042, Page 9
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