The Patent and Trademark Office Board of Patent Appeals and Interferences (board), in Interference No. 101,111, awarded priority of invention to junior party Youssefyeh et al. over senior party Oka et al., who relied on their October 31, 1980 Japanese filing date under 35 U.S.C. § 119. We reverse.
Background
The sole generic count in the interference is directed to compounds possessing angiot-ensin converting enzyme inhibition activity, and is set forth as follows:
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wherein:
R and Rg are independently hydroxy or lower alkoxy;
*583 Ri is hydrogen, lower alkyl or aryl lower alkyl;
R2, R3, R4, R5, R7 and Rg are hydrogen or lower alkyl;
R6 is indanyl;
and their pharmaceutically acceptable salts.
The compounds can be described as optionally esterified carboxyalkyl substituted dipeptides that contain two amino acid groups, one of which, typically a glycine, bears a group R6, defined as an “indanyl group”. The indanyl glycine of the count may be a Cycloaliphatically-bonded Inda-nyl, typically a 2-indanyl group, or an Aromatically-bonded Indanyl, typically a 5-in-danyl group.
On February 27, 1980, one of Youssef-yeh’s co-inventors, Suh, recorded in his notebook this structural formula, encompassing billions of compounds within the class of 2-Indanyl Glycines:
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OPINION
Conception requires (1) the idea of the structure of the chemical compound, and (2) possession of an operative method of making it.
Coleman v. Dines,
Conception may conveniently be considered as consisting of two parts. The first part is “the directing conception” and may be defined as the idea or conception that a certain desired result may be obtained by following a particular general plan. The directing conception is often referred to as the inventive concept, thought or idea. The second part of conception is “the selection of the means for effectively carrying out the directing conception.”
When, as is often the case, a method of making a compound with conventional techniques is a matter of routine knowledge among those skilled in the art, a compound has been deemed to have been conceived when it was described, and the question of whether the conceiver was in possession of a method of making it is simply not raised. In the present case, the board itself recognized that conception required both a description, i.e., the idea, of a compound and possession of a method for making it. In denying Youssefyeh’s claim of February 27, 1980, as its conception date, the board said:
It is Youssefyeh’s position that conception occurred on February 27, 1980, * * * because the inventors believed on that date that the compounds could be prepared in accordance with conventional techniques. However, Bernstein, a skilled Ph.D. chemist, spent over six months and was not successful in preparing the 2-indanyl compounds within the scope of the count, a circumstance which indicates that the inventors did not contemplate an operative invention, e.g., an operative method for making the compounds as of February 27, 1980.
The board made these not clearly erroneous findings: (1) because Youssefyeh had only the idea of a 2-indanyl class of compounds on February 27, 1980, it did not establish conception on that date; (2) Youssefyeh was in possession of a method of making a compound outside the scope of the interference count on October 10, 1980; (3) during the last week of October 1980, co-applicant Suh directed his assistant to use the October 10,1980 method to prepare a species of a 5-indanyl class of compounds within the scope of the interference count; (4) the assistant successfully did so in December 1980; (5) Youssefyeh reduced the *584 invention to practice on January 9, 1981. 1 Based on findings (2), (3), and (4), the board found that “an operative procedure was realized for preparing the 5-indanyl compound” as of October 10, 1980. That finding was clearly erroneous.
The board correctly noted that conception of a species within a genus may constitute conception of the genus.
Miller v. Walker,
That the October 10 method was found in December, after Oka’s filing date, to be an effective method of making the 5-indanyl compound did not serve to move the date on which Youssefyeh had the idea of the 5-indanyl compound back to October 10, 1980. There is no evidence that that method could be used to make the 2-indanyl compound, and, given the difference between aromatically-bonded and cycloalip-hatically-bonded indanyl glycines, there is no basis for a view that a description or method of making one is applicable to the other. The board made no finding that Youssefyeh had the idea of a 5-indanyl compound before the last week of October 1980. Youssefyeh does not argue, and no one testified, that it did have that idea before that time. The record would not in any event support such a finding. The board therefore erred in determining that Youssefyeh had established conception as of October 10, 1980.
Because Oka is the senior party, Youssefyeh was required to establish reduction to practice
before
Oka’s filing date, or conception before that date coupled with reasonable diligence from just before that date to Youssefyeh’s filing date. 35 U.S.C. § 102(g);
see Bey v. Kollonitsch,
Thus Youssefyeh’s conception and Oka’s filing date are the same,
i.e.,
October 31, 1980. Oka, as the senior party, is presumptively entitled to an award of priority, and Youssefyeh, as the junior party in an interference between pending applications, must overcome that presumption with a preponderance of the evidence.
Morgan v. Hirsch,
REVERSED.
Notes
. In view of our determination respecting conception, we need not and do not reach the parties’ arguments on diligence and reduction to practice, except to note that neither party argues that the dual requirement for conception of an operative invention (idea plus method of making) equates conception with reduction to practice. The latter in this case would involve verification of the compound’s utility as a hypoten-sive agent.