Appealed from: U.S. Patent and Trademark Office Board of Patent Appeals and Interferences. Interference No. 102,399
Before Archer, Chief Judge,*fn* Plager, and Lourie, Circuit Judges.
Elmar Bosies and Rudi Gall (Bosies) appeal from the June 30, 1993 decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences awarding priority in Interference No. 102,399 to James J. Benedict and Christopher M. Perkins (Benedict). Because the board erred as a matter of law in concluding that Benedict proved conception of the subject matter of the counts prior to Bosies' effective filing date, we reverse.
This interference was declared on May 24, 1990 between an application of Benedict, Serial No. 06/806,155, assigned to Proctor and Gamble Company, and U.S. Patent 4,687,767 to Bosies, assigned to Boehringer Mannheim GmbH. Bosies, the senior party, was accorded the benefit of the August 2, 1984 filing date of his German patent application. Benedict was accorded the benefit of the December 21, 1984 filing date of his parent application.
The interfering subject matter relates to diphosphonate compounds, compositions, and methods for the treatment of calcium metabolism disorders. The three counts are respectively directed to the compounds, compositions, and methods. Count 1 is illustrative and reads as follows:
A diphosphonate compound of the formula
Het is a substituted or unsubstituted heterocyclic selected from the group consisting of imidazole, or pyridine, 1,2,4-[sic, triazole?] and wherein the substituents are selected from the group consisting of C-C alkyl, C-C alkoxy, halogen selected from the group consisting of fluorine, chlorine, bromine, iodine; hydroxyl, carboxyl, an amino group optionally substituted by C-C alkyl or alkanoyl with up to 6 carbon atoms; benzyl and benzyl substituted by C-C alkyl, nitro, amino or aminoalkyl with 1 to 4 carbon atoms, A is a straight-chained [sic] or branched, saturated or unsaturated hydrocarbon chain containing 2 to 8 carbon atoms,
X is a hydrogen atom, hydroxy, or alkanoyl of up to 6 carbon atoms and R is a hydrogen atom or an alkyl of 1 to 4 carbon atoms; or a ...