Application of Philip M. CARABATEAS.
Patent Appeal No. 7476.
United States Court of Customs and Patent Appeals.
March 24, 1966.
Rehearing Denied May 5, 1966.
53 CCPA 1000
Appellee does not dispute that DAMON is a commоn surname. It is argued, however that “Darmen * * * looks like a name * * *.” Appellee supports this proposition by allegedly finding a Darman in the Boston Telephone Directory (not of record) and a Darmon in the St. Louis Telephone Directory (not of record). It overlooks, however, the form of appellant‘s registered mark, which does not look like a name and, moreover, ends in “men.”
The “hard core of appellee‘s complaint in this proceeding,” says its brief, is that ‘dar men’ and DAMON would probably be pronounced alike, at least in certain areas of the country. Thе theory is rather finely spun and we think it would have to be to arrive at such a conclusion. It involves the premise that some New Yorkers and eastern New Englanders do not pronounce their “r‘s” in certаin words. While that may be true, we do not see its application to the present fact situation. As appellant points out, the name Damon is in the dictionary and its pronunciation is given with a long “а“, with the sound of the word “day.” We think it would not be likely to be pronounced otherwise. We also think that even people who drop their “r‘s” would not pronounce ‘dar men’ with the “day” sound. Even without the “r” sound, the presence of the “r” calls for pronunciation of the “a” as ah. Therefore we conclude, contrary to the board, that the marks are not reasonably susceptible to similar pronunciation.
We also are constrained to disagree with the board that the marks look alike. In saying that they do, the board opinion merely compares “Damon” and “Darmen“—typed just so—ignoring the design features of the mark as shown in the registration sought to be cancelled and reproduced above. We regard the design as a limitation of the registration which should be given some effect and which appears to have been ignored.
We think the principles we applied in the General Electric case apply here and therefore the decision of the board is reversed.
Reversed.
MARTIN, Judge, with whom KIRKPATRICK, Senior District Judge, joins (dissenting):
The goods of the parties overlap. The spelling and appearance of the marks are highly similar, and the sound even more so. When the marks are considered, each in its entirety and removed in time and distant in place, it is clear to me that their concurrent use would be likely to cause confusion, mistake, or to deceive. This is particularly true since the marks can be used in speech. Appellant has not persuaded me of clear error in the board‘s decision, and thus I would affirm.
Clarеnce W. Moore, Washington, D. C. (J. E. Armore, Washington, D. C., of counsel), for Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.
OPINION
WORLEY, Chief Judge.
This appeal is from the decision of the Board of Appeals affirming the exаminer‘s rejection of claims 1 and 2 in appellant‘s patent application1 for “4-aryl-4- (lower acyloxy)-1-(3-aryl-3-hydroxypropyl)-piperidines and their preparation.” Appellant has withdrawn appeal of claim 2.
The appealed subject matter is represented by the chemical compound of claim 1:
1. 1 - (3-Hydroxy-3-phenylpropyl) - 4-phenyl-4-propionoxy-piperidinе.
That compound has the structural formula
and is useful as an analgesic. The references are:
| Elpern II | 2,846,437 | August 5, 1958. |
| Elpern I | 2,850,500 | September 2, 1958. |
| Pohland II | 2,904,550 | September 15, 1959. |
| Pohland I | 2,951,080 | August 30, 1960. |
| Cutler et al. | 2,962,501 | November 29, 1960. |
The disclosure of those references was reviewed by this court in In re Carabateas, 345 F.2d 1013, 52 CCPA 1386, and need not be further detailed here beyond noting that Cutler and Pohland I disclose an analgesic of the structural formula
The еxaminer found appellant‘s piperidinol ester obvious from a consideration of the Cutler, Elpern and Pohland patents, employing reasoning similar to that used by the examiner in Carabateas.
Appellant contends that an affidavit showing the compound of claim 1 to be nineteen times more active as an analgesic than the “reverse ester” compound of Cutler and Pohland I when administered subcutaneously is persuasive evidence of unobviousness and patentability of the compound.2 As reference to our decision in Carabateas will establish, we thought the Elpern patents collectively suggested that piperidinol esters having the structure of appellant‘s compounds
We have re-examined the Elpern references on which heavy reliance was placed in our original Carabateas opinion. While we are of the view that those references, together with Cutlеr, collectively establish obviousness of the structural formula and analgesic activity both of appellant‘s compounds claimed there and the present compound, we think we erroneously concluded in Carabateas that the Elpern patents would suggest to one of ordinary skill that any improvement in analgesic activity would necessarily inhere in compounds derived from piperidinol, ring-O-Ć-C2H5, when cоmpared to otherwise identical compounds of the carboxylate structure, ring-Ć-O-C2H5.4 In the absence of a suggestion in the present record that the nature of appellant‘s improvement would be expected,
The decision of the board is reversed.
Reversed.
RICH, Judge (concurring).
I am satisfied this is a clear case for reversal, but for reasons other than those stated by the majority.
While I agree that the art of record collectively establishes оbviousness of the structural formula and analgesic activity of the compound defined by the claim on appeal, I am unable to agree that a finding of an improvement in activity in esters of the type here involved, obtained from piperidinols, compared to those obtained from piperidine carboxylic acids, would be wholly unexpected to one of ordinary skill in the art with those references before him. To conclude otherwise, it seems to me, is to deny the realities of the situation; for the plain fact is that, without exception, the Elpern II compounds demonstrаte potency greater than that possessed by the Elpern I compounds. While those compounds differ structurally in two respects, there is no reason to believe that either is not responsible, at least in part, for that increase in activity.
I would therefore reverse on what to me is a much sounder basis, both in law and on the facts presented, namely that the art makes no suggestion whatеver that a reversal of the ester linkage would result in an increased activity approximating the nineteen-fold increase found by appellant. At the very best, the art suggests an increase of the order of four to eight times. This is a far cry from what appellant found.
The question is not, it seems to me, whether the art suggests an improvement, but rather whether it reasonably suggests the particular improvement relied upon for patentability in both its qualitative and quantitative sense. See In re Lunsford decided March 17, 1966, 357 F.2d 380, 53 CCPA —. As in all
Notes
In drawing that conclusion, we assumed that the “4-acetoxy” compound of Elpern II was identical to (e. g. the exact “reverse ester“) the ethyl-4-carboxylate compound of Elpern I but for reversal of the ester linkage. In fact it is not, as comparison of the respеctive structures (ring-O-C-CH3 vis a vis ring-C-O-C2H5) demonstrates. We think such a comparison of ester homologues to be too tenuous to suggest that any improvement would be obtained solely because of reversal of the ester linkage. That comparison being the controlling evidence in Carabateas, we think the decision there rendered necessarily is incorrect.Referring to the Elpern patents, it will be seen that the Elpern II “1-(3-phеnoxypropyl)-4-acetoxy-” compound, which has the same sort of ester structure as appellant‘s compounds, possesses twice the analgesic activity of the Elpern I ethyl (3-phenoxypropyl) piperidine-4-carboxylate. Compared with the Elpern I ethyl (2-phenoxyethyl) piperidine-4-carboxylate and ethyl (4-phenoxybutyl) piperidine-4-carboxylate esters, this same Elpern II сompound, albeit not the exact “reverse ester” but instead a homolog thereof, is, respectively, four and eight times more effective as an analgesic. We believe this amply suggests that esters having thе structure of appellant‘s compounds will possess greater analgesic activity than their “reverse esters.”