Parker v. Marzall, 92 F. Supp. 736 (D.D.C. 1950)

*737 Robert Ames Norton, Stamford, Conn., Edmund H. Parry, Jr., Washington, D. C., for plaintiffs.

E. L. Reynolds, Solicitor, United States Patent Office, Washington, D. C., for defendant.

LETTS, District Judge.

The above-entitled action having been tried on April 19, 1950, after due consideration the Court entered an informal memorandum on July 5, 1950, now enters the following findings of fact and conclusions of law, pursuant to Rule 52 of the Rules of Civil Procedure, 28 U.S.C.A.

1. This is a civil action brought under the provisions of Section 4915, R.S., 35 U.S.C.A. § 63, in which plaintiffs, Robert Prescott Parker, Frederic Henry Adams and George Raymond Waitkins, seek to have the Court authorize the Commissioner of Patents to issue a patent upon their application Serial No. 611,223, entitled "Acetoacetic-Arylides" and containing claims 1, 2 and 3 thereof.

2. Claim 1 is a generic claim covering, and limited to, the group of two chemical compounds of claims 2 and 3 and is as follows:

"1. Chemical compounds represented by the formula:

wherein R is an alkyl radical selected from the group consisting of methyl and ethyl radicals."

3. Claim 2 claims the chemical compound acetoacet-2'-methoxy-5'-ethylanilide, the compound according to claim 1 where R is methyl.

4. Claim 3 claims the chemical compound acetoacet-2'-ethoxy-5'-ethylanilide, the compound according to claim 1 where R is ethyl.

5. The prior art relied upon against the claims by the defendant, the Commissioner of Patents, is German patent 256,621 to Bayer, and United States patent 2,112,764 to Dahlen et al.

6. Said Bayer and Dahlen patents disclose acetoacet-2'-methoxy-5'-methylanilide, and do not disclose the compounds of plaintiffs' claims 1, 2 and 3.

7. The compound of plaintiffs' claim 2 is the next adjacent homologue of the compound of said Bayer and Dahlen patents.

8. The compound of plaintiffs' claim 3 is the next adjacent homologue of the compound of plaintiffs' claim 2.

9. The claimed compounds are intermediates, for the production of azo dye-stuffs and particularly yellow azo pigments.

10. The evidence produced at the trial included a series of comparative physical exhibits of yellow azo pigments in a variety of applications made from the claimed compounds and from the prior art compound and qualified witnesses testified with respect to the properties of the series of exhibits.

*738 11. The evidence produced at the trial proves that the compounds claimed by plaintiffs possess some unobvious and unexpected beneficial properties not possessed by the homologous compound disclosed in the prior art defense patents.

1. The evidence produced at the trial as to yellow pigments prepared from the compounds of plaintiffs' claims 1, 2 and 3 and the compound of the reference was proper evidence as to the properties possessed by the compounds themselves.

2. In view of the evidence of unobvious, unexpected and beneficial properties of the compounds of plaintiffs' claims 1, 2 and 3 not possessed by the homologous compound disclosed in the prior art, such claimed compounds constitute patentable invention. In re Haas et al., 1944, 31 C. C.P.A., Patents, 895, 141 F.2d 122.

3. The plaintiffs are entitled, according to law, to receive Letters Patent for the invention specified in claims 1, 2 and 3 of their application Serial No. 611,223.