Full opinion text
(“CORRECTED” ) DECISION PENCE, District Judge. BACKGROUND On May 5,1961 Application Ser. No. 106,-146 was filed in the United States Patent Office as a continuation in part (c.i.p.) of a prior co-pending Application Ser. No. 31,236 as filed May 23, 1960. The application listed Robert E. Blackwood, Hans H. Rennhard, John J. Beereboom, and Charles R. Stephens, Jr., inventors, as assignors to Charles R. Pfizer & Co., Inc. of New York, N. Y., a Delaware corporation The application was for a patent on 6-deoxytetracy-cline derivatives and process. It was not until over five years later, on August 10, 1965, that Patent # 3,200,149 was issued on certain chemical processes and products, one of which was the chemical compound that came to be known as alpha-6-deoxy-5-oxytetracycline. The generic name for that compound is doxycycline, marketed by Pfizer under the trademarked name of Vibramycin. Doxycycline, a synthetically produced chemical of the tetracycline family, proved to be a broad spectrum antibiotic exhibiting a high order of antibacterial action against a wide range of disease-causing microorganisms. It had essentially the same antibacterial properties of the fermentation-produced tetracyclines but had antibacterial action (microbiological activity against gram-positive and gram-negative microorganisms) superior to that of any other then known 6-deoxytetracyclines. As appeared in the file wrapper of the patent, it took a smaller amount of doxycycline to secure the antibacterial action expected from any of the then known tetracyclines. Because it took a smaller dosage to produce like antibiotic effects, a patient taking doxycycline did not have to take as many or as large dosages of a tetracycline drug as had been necessary before. Although it was not set forth in the patent application as one of the properties of the drug, doxycycline was found to have a lipophilicity much greater than any tetracycline and could be used much more freely by persons with renal diseases. Doxycycline became one of the most commercially successful of the tetracycline group of antibiotic drugs. International Rectifier Corporation (IR), with head office in California, began making doxycycline in Italy using the process described in Pfizer’s patent, and started selling and distributing it in the United States and elsewhere in 1973, at a price very much lower than that charged by Pfizer. , Pfizer then brought the patent infringement suit now before the court, seeking damages and declaratory and injunctive relief, in the Central District of California, against IR, as well as U. S. V. Pharmaceutical Corporation, which had distributed IR’s doxycycline in the United States. As is standard procedure in almost every patent infringement action, IR and USV answered that Pfizer’s patent was invalid and unenforceable for failure to meet statutory requirements of patentability and for fraud and misconduct before the Patent Office. Both defendants at first admitted infringement but thereafter moved to amend their answers, asserting unfair competition and antitrust counterclaims, as well as denying infringement. (This court subsequently refused to allow them to amend to deny infringement.) Upon, defendants’ motion, and because the so-called “Antibiotics Antitrust Litigation” was already pending there, the Judicial Panel on Multi-district Litigation, in March 1973, transferred the case to District Judge Miles W. Lord in the District of Minnesota. During pretrial action before Judge Lord, defendants moved for partial summary judgment, claiming that Pfizer’s conduct during the processing of the patent constituted fraud, inequitable conduct, and unclean hands, and, in addition, charged that Pfizer’s conduct before Judge Lord between 1973 and 1975 was also fraudulent and inequitable and separately justified invalidation of the patent. On July 16, 1975, Judge Lord granted partial summary judgment against Pfizer on both grounds and declared that its doxycycline patent was invalid and unenforceable. Pfizer appealed, and on June 16,1976, the Appellate Court reversed Judge Lord, 538 F.2d 180 (8th Cir. 1976), holding that the evidence presented as to alleged misconduct of Pfizer before the Patent Office showed the existence of such material issues of fact as to preclude summary judgment. The Appellate Court further held that Judge Lord’s findings that Pfizer had practiced fraud and other inequitable conduct upon the court were clearly erroneous. The case was then remanded for completion of pretrial proceedings to be followed by a plenary trial. This judge was requested by both plaintiff and defendants to try the case, jury-waived, and, with the consent of Judge Lord he took over the case. Upon motion, the Judicial Panel transferred it back to the Central District of California. Then followed further extensive pretrial proceedings, during which USV reached an agreement with Pfizer and withdrew from the case. Trial on the issue of validity and all issues relating to enforceability which involved claims of fraud or inequitable conduct in the Patent Office was started on October 15, 1978 before this judge, sitting in the Central District of California, and continued almost uninterruptedly until March 8, 1979. The trial produced over 6,000 pages of transcript, over 2,000 exhibits, and almost a “ten-foot shelf” of depositions. Post-trial Briefs and Answering Post-trial Briefs were also filed by both plaintiff and defendants. The mass of evidence produced at trial more than proved the soundness of the conclusion of the 8th Circuit that there were such material disputed issues of facts as to preclude summary judgment. Disputed issues of intent, good faith, credibility, and other subjective feelings, all of which are entwined in any claim of fraud or inequitable conduct before the Patent Office, demanded full examination through a plenary trial. Although this case was tried in the 9th Circuit, nevertheless this court feels that the statements of the Court of Appeals for the 8th Circuit regarding the law of the case approach the level of stare decisis, if not res adjudicata. As pointed out by the 8th Circuit: The principle that a defendant in a patent infringement action may interpose as a complete defense the patentee’s failure to deal candidly with the Patent Office is a corollary of the equitable doctrine of unclean hands. The Supreme Court has set forth the duty of candor owed by a patent applicant as follows: Those who have applications pending with the Patent Office or who are parties to Patent Office proceedings have an uncompromising duty to report to it all facts concerning possible fraud or inequitableness underlying the applications in issue. * * * Public interest demands that all facts relevant to such matters be submitted formally or informally to the Patent Office, which can then pass upon the sufficiency of the evidence. Only in this way can the agency act to safeguard the public in the first instance against fraudulent patent monopolies. Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 818 [65 S.Ct. 993, 999, 89 L.Ed. 1381] (1945). The equitable origins of this doctrine, combined with recognition of the growing administrative burden facing the Patent Office, have led to expansion of the defense in recent years to encompass also a wide variety of inequitable conduct short of common law fraud or deceit. (538 F.2d 180, 185) * * * [T]he standard [of conduct] is not one of strict liability for innocent or even negligent omissions or misstatements before the Patent Office. Rather, to result in refusal to enforce a patent, the misconduct must be accompanied by “some element of wrongfulness, willfulness, or bad faith” (a “willful act * * * which rightfully can be said to transgress equitable standards of conduct”). This requirement of proof has been uniformly applied in infringement actions by a majority of the circuits to claims of both fraud and lesser inequitable conduct. Moreover, proof of misconduct under either theory must be established by “clear, unequivocal and convincing” evidence. (185, 187, supra) UNDISPUTED FACTS Before turning to the disputed issues to be analyzed with this background, the court finds the following facts to be undisputed. 1. Doxycycline is one of a group of tetracycline compounds which have the following general structure in common: 2. The 4-, 5-, and 6-carbon atoms are asymmetric, each bonded to two substituents, one above and the other below the plane. When the doxycycline application was filed on May 5, 1961, the absolute stereo-chemistry of the tetracyclines was unknown. It was not until Dobrynin, et al., of the USSR Academy of Science in Moscow, apparently first published their paper on “The Absolute Configuration of the Tetracyclines” in Russia on March 21, 1962, then published in Great Britain after July 2, 1962, that the chemical world was apprised of the absolute stereochemistry of the tet-racyclines. It must thus be noted that those “skilled in the art” did not have knowledge of the absolute chemistry of the tetracyclines until, at the earliest, almost a year after Pfizer filed its application for the doxycycline patent. Before Dobrynin, even the most “skilled in the art” could only know and deal with the relative stereo-chemistry of the tetracyclines. Before the discovery of doxycyclines, one of the known tetracyclines was the fermentation-produced drug called oxytetracycline sold by Pfizer under the trade name Terra-mycin. It is also known as 5-oxytetracy-cline. Following the Dobrynin publication, it was established that the absolute stereo-chemical configuration of oxytetracycline is as illustrated: In this diagram, CH3 represents a methyl group, and N(CH3)2 represents a dimethy-lamino group. Before the discovery of doxycycline, American Cyanamid (Cyanamid), operating its drug division under the name of Lederle Laboratories (Lederle) had developed and patented what came to be known in this litigation as the McCormick compound. The McCormick compound was produced by the hydrogenolysis of oxytetracycline whereby the 6-hydroxyl group was removed and 6-deoxy-5-oxytetracycline, also known as 6-deoxy-oxytetracycline (and much later as beta-6-deoxy-oxytetracycline), was produced. The research departments of all manufacturing drug companies are constantly in search of new drugs and employ every available means to produce them. The tetracyclines had proved to be so beneficial in treating certain types of animal and human ailments that Cyanamid and Pfizer had become the leaders in research involving the tetracyclines. The nature of the patent process, with its monopolistic rewards, was (and is) such that there was always a race to the Patent Office upon the discovery of any new chemical compound that intracompany tests showed had marked antimicrobial activity. It was also the normal practice for the patent attorneys for each company to urge interferences in patent applications of the other, with the hope of forestalling the issuance of a patent on a drug claimed as having been discovered by research chemists of the other company. Patent rules and regulations are so set up that a patent application, once filed, may be amended time after time and so long as there is a “c.i.p.” the original filing date is preserved as the date of inventive process. Since these applications are not made public until the patent is issued, it is common patent practice on the part of the patent lawyers and the accepted procedure by the Patent Office to amend an application so as to include in it what may actually have been a later-developed product in order to get it the advantage afforded by the early date of the parent application. This is done in order to forestall the effectiveness of any interference claims which might be made. DEFENDANT’S POSITION Where, as in this case, infringement is charged and the defendant then contends that the patent is invalid, in its legal effect the burden of proof shifts and, as the 8th Circuit said, the burden falls upon the defendant to prove the patentee’s alleged misconduct by clear, unequivocal, and convincing evidence. (538 F.2d 180, 185, supra.) IR challenges the validity of Pfizer’s patent on these grounds: I. The doxycycline patent is obvious from methacycline. II. Pfizer fraudulently claimed that ruthenium could be used as a catalyst in preparing doxycycline. III. Pfizer fraudulently claimed that the process set forth in Example 35 would make 7-chloro-doxycycline. IV. Pfizer fraudulently concealed prior art references, inherent coproduction of doxycycline, and fraudulently misrepresented the results of its coproduction experiments. V. Pfizer fraudulently concealed the significance of the Belgian Patent diagram as the most pertinent prior art. VI. The use by Pfizer of the term “epi” in its application was to represent falsely that doxycycline had unexpectedly superior antibacterial activity over the prior tetracy-clines. VII. Pfizer fraudulently misrepresented the antibacterial activity of doxycycline. VIII. Pfizer intentionally named false inventors of doxycycline. FINDINGS OF FACT AND CONCLUSIONS OF LAW I. OBVIOUSNESS As indicated above, the two drug firms that were most active in experimental research with the terramycins and tetracy-clines were Lederle and Pfizer. McCormick of Lederle had first discovered, and Lederle patented, what will be referred to hereafter as the “McCormick Patent” or the “Belgian Patent”, whereby hydrogenation of fermentation-produced oxytetracycline (OTC) produced what became known as beta-6-deoxy-oxytetracycline after Pfizer produced its doxycycline. In the course of Pfizer’s research, Pfizer scientists discovered and then patented me-thacycline (6-deoxy-6-demethyl-6-methy-lene-5-oxytetracycline). That patent also covers lla-halo-6-methacycline. Methacy-cline and the other 6 methylene compounds all have a CH2 carbon-to-carbon double bond at the 6th position. Methacycline differs from OTC in that at the 6th position the hydroxyl (OH) is removed and the methyl (CH3) is changed to a carbon-to-carbon double bond. Example: Upon discovering methacycline, Pfizer’s chemists then conceived the hydrogenation process of adding a hydrogen to the double bond (CH2) making a methyl (CH3) and adding another hydrogen (H) opposite the methyl (CH3). When that is done, the following results: Pfizer’s process produced not only what it named at first the “epi”, then later, the “alpha” 6-deoxy-oxytetracycline, i.e., the doxycycline in issue, but also McCormick’s (beta) 6-deoxy-oxytetracy-cline. Both Drs. Stephens and Conover of Pfizer’s research staff had been attempting to find the 6th epimer to Lederle’s 6-deoxy-5-oxytetracycline in 1958-59. When the Pfizer chemists found methacycline, they then conceived the idea that hydrogenation of methacycline would possibly dissolve the double bond and that possibly both Led-erle’s 6-deoxy-5-oxytetracycline and the other epimer at the 6th position would be produced. Dr. Stephens, in his May-June 1960 bimonthly report, issued contemporaneously with the discovery of the 6 methylene compounds, stated, “The methylene tetracyclines offer unique theoretical possibilities for derivative formation due to the presence of the styrene-like double bond”, and that when methacycline was discovered, “we wanted to do a lot more work to make things from that.” It gave Stephens and his group another chance to find the C-6th epimer to the McCormick compound. It is IR’s position that the hydrogenation of a carbon-to-carbon double bond “was the most well known of all of the chemical reactions of the double bond and was expected to add hydrogen to the double bond to form methyl (CH3) and hydrogen (H) groups in both the 6-deoxy epimeric forms, i.e., alpha and beta.” IR cites Royal’s Classical 1954 Organic Chemistry Text statement that “... Catalytic addition of hydrogen is the most general reaction of the carbon to carbon double bond ... at least 99% of all known compounds containing the alkene linkage will add hydrogen over a hydrogenation catalyst ... . ” As stated previously, and as will be stated hereafter, at the time that methacycline was discovered and Pfizer’s doxycycline was discovered, the absolute chemistry of neither methacyclines nor the tetracyclines was known. Lederle chemists believed that they had accurately determined the relative stereochemistry of the oxytetracyclines, but they were later proved wrong. Pfizer chemists were a little more advanced in their knowledge of the stereochemistry, but even they were not sure. Blackwood and Stephens in 1960 thought that methacycline was a 5a, 6-anhydrotetracycline, whereas it was not, but rather was a 6-methylene tetracycline. Dr. Woodward testified that it was impossible to predict that the hydrogenation of methacycline would yield doxycycline nor could it be assumed that hydrogenation conditions would be found to produce it. Me-thacycline contains a plurality of double bonds at any of which hydrogen might react and it could not have been assumed by either Pfizer or Lederle chemists, certainly those then most “skilled in the art”, that hydrogenation of methacycline would, with certainty, take place only at the 6 methylene group to form a 6-deoxy compound, or that hydrogenation would not affect changes elsewhere in the molecule. Dr. von Schach testified that it would not have been possible to predict that the hydrogenation of methacycline would form either the alpha or beta or both deoxy epimers; that tetracyclines, including methacycline, are complex compounds with many reactor centers. They do not behave like alkenes, which have only one reactive center. After the methacycline patent was issued (May 16,1961), a Pfizer publication describing methacycline and its preparation appeared in the Journal of the American Chemical Society (J. A. C. S.) in June 1961. Pfizer did not publish its discovery of doxy-cycline until July 5, 1962. As indicated above, during the ’50’s and ’60’s Lederle’s chemists were also researching for new tet-racyclines. Lederle’s patents during that period show that it was active in the preparation of oxytetracycline derivatives but there was no evidence before this court that anyone other than Pfizer conceived and produced doxycycline during that one-year period following the issuance of the methacy-cline patent. Shortly after Pfizer had its patent on methacycline, Lederle secured some metha-cycline “to determine some of the physical, chemical, and biological characteristics of this new antibiotic” for test purposes, including catalytic hydrogenation. As IR would have Royal’s statement interpreted, it should have then been obvious to Led-erle’s Dr. McCormick that he should attempt to and would obtain doxycycline from the hydrogenation of a sample of Pfizer’s methacycline. In fact, as pointed out in Pfizer’s Post Trial Brief (pp. 205-6), Led-erle’s contemporaneous report of its own hydrogenation (USV Dep. Ex. 269, p. 2) is utterly silent on doxycycline, merely stating that Lederle detected only the McCormick compound (beta doxycycline) in the hydrogenation product. This alone shows that despite Royal’s textbook statement, it was far from obvious to those most skilled in the art that the alpha epimer would be found by the hydrogenation of methacycline. That Pfizer’s chemists were aware of a possible method of attacking the problem of finding the 6th epimer, from their own knowledge of methacycline’s molecular structure, does nothing more than teach that it was to them obvious to try. Such possibilities are insufficient to reach the level of obvious predictability of success necessary to sustain a rejection under § 103. That Blackwood and Stephens felt that there was a “one in three chance that hydrogenation of methacycline would produce doxycyeline,” or that Murai stated that when he attempted to separate the products of a ruthenium catalyzed hydrogenation of methacycline he expected that both the alpha and beta 6-deoxy epimers would be produced, or that Beereboom, in attempting to demonstrate the success of the 7-chloro doxycyeline experiment stated that he anticipated that both deoxy compounds would be likely to be formed, or that Oglesby, in switching the product claims from the PC 3597 series of Pfizer’s patent applications to the PC 4429 series (PC 4429-D is methacycline) on the ground that doxycyeline “inhered” in the hydrogenation of methacycline does not validate IR’s contention that the production of doxycycline was obvious to those skilled in the art after methacycline was discovered. Methacycline did not become prior- art as urged by IR simply because its molecular structure contained a carbon double bond at the 6th position. As was held by the 9th Circuit in Reeves Instrument Corp. v. Beckman Instrument Inc., 444 F.2d 263, cert, denied 404 U.S. 951, 92 S.Ct. 283, 30 L.Ed.2d 268 (1971), determination of ordinary skill in the art “can be made only by an analysis of the problem allegedly solved by the invention and the efforts of others to arrive at a satisfactory solution.” An applicant’s own earlier work is not prior art as to him. Even though Pfizer’s chemists, after discovering methacycline, perceived possible potentials in the new product, it took more than six months after Pfizer had produced it and knew its structure for them to discover doxycyeline. IR’s contention that once methacycline had been made it could have obviously and immediately been predicted by those skilled in the art that methacycline would hydrogenate solely at the 6th position and that both 6-deoxy epimers would be produced is without merit. Predictability of Product Characteristics IR’s second basis for maintaining that doxycyeline was obvious from methacycline is founded upon its contention that those skilled in the art expected that both the alpha and beta compounds produced at the 6th position (a) would be more stable than the fermentation-produced product; (b) that the alpha epimer would have greater antibacterial activity than the beta epimer; and (c) that in fact the antibacterial activity of doxycyeline differs only in degree and not in kind from the activity of the previously known tetracyclines. At the time doxycyeline was produced by Pfizer’s chemists, Lederle’s McCormick compound was believed by Lederle’s chemists to have a “natural” configuration, i.e., the same molecular configuration as found in the fermentation-produced product. As will be discussed more fully hereafter, McCormick’s Belgian Patent, on what ultimately proved to be the beta-6-deoxy-tetra-cycline produced by hydrogenolysis of the parent fermentation-produced tetracyclines, illustrated that compound as having the same stereochemical configuration as the parent tetracyclines in all positions, including the 6th position, i.e., “natural”. (Later developments show that this conclusion was erroneous, but nevertheless that was the state of the prior art at the time of Pfizer’s discovery.) Both McCormick’s beta compound and Pfizer’s alpha doxycycline actually chemically differ only in the stereochemical orientation of the 6 methyl group. IR states that Pfizer’s and Lederle’s published literature, beginning as early as 1958, reported that “removal of the 6 hydroxyl group (6-OH) resulted in 6-deoxy compounds which also retained activity and had increased stability ... in acids and alkali”, and “that neither the C-6 methyl nor the C-6 hydroxyl was necessary for antibacterial activity, and that the absence of both groups improved the stability of the compound.” It would logically follow, from IR’s contention that no antibacterial benefit could result from the discovery of the true alpha 6 epimer, that Pfizer’s chemists would be dissuaded from attempting to perform the studies and experiments that led them to find doxycycline. The McCormick compound possesses a 6 methyl group, and if a 6 methyl group is not necessary for antibacterial activity, it would follow that there should be no incentive to alter the orientation of that group because there should be no expectation of improved antibacterial activity. As stated in In re Stemniski, 444 F.2d 581, 58 CCPA 1410 (1971): For example, what on this record — other than abstract, theoretical or academic considerations — would lead one of ordinary skill to change the structure of the reference compounds to obtain the claimed compounds? ... How can there be obviousness of structure, or particularly of the subject matter as a whole, when no apparent purpose or result is to be achieved, no reason or motivation to be satisfied, upon modifying the reference compound’s structure? To the same effect, the court, in In re Bergel, 292 F.2d 955, 956-57, 44 CCPA 1101 (1961), stated: The mere fact that it is possible to find two isolated disclosures which might be combined in such a way to produce a new compound does not necessarily render such production obvious unless the art also contains something to suggest the desirability of the proposed combination. [Emphasis in original.] The knowledge that 6-deoxy-tetra-cyclines display good stability in acids and alkali is irrelevant because it was never advanced by Pfizer as one of the bases for patentability of its product. IR’s claim that doxycycline was found to have a “natural” configuration and therefore its superior activity was to be expected likewise is without merit. At the time that. Pfizer’s chemists discovered and produced doxycycline, Lederle’s chemists (among those most skilled in the art) were convinced that Dr. McCormick had achieved production of the natural configuration in the product covered by Lederle’s Belgian Patent. On page 3 of Lederle’s (Dr. McCormick’s) Bélgian Patent are found two stereochemical diagrams, one of the parent tetracyclines, the other, the 6-deoxy products of their hydrogenolysis. Those two diagrams show identical relative stereo-chemistry to each other at all positions. Thus, the 6th position in the McCormick compound is shown to be the “natural configuration”. That was the “state of the art” when Pfizer found doxycycline. Dr. McCormick testified that it was his assumption that “the C-6 methyl group in the 6-deoxyterramycin had the same stereo configuration as the C-6 methyl group in terramycin.” This erroneous conclusion of Lederle’s chemists was not changed until after the Muxfeldt publication appeared in 1962, long after Pfizer’s doxycycline application had been filed. IR’s claim that doxycycline is unpatentable because it differs in degree but not in kind is likewise without merit. As was stated by the C.C.P.A. in In re Wagner, 371 F.2d 877, 54 CCPA 1031 (1967): We find nothing in section 103 which warrants the board’s attempted dismissal of the differences between appellants’ claimed compound and the prior art as not being “differences in kind,” whatever this may mean. This phrase as here encountered is used by the board to infer that unless a “difference in kind” is found, the invention is obvious under section 103. Whether the difference between the claimed invention and the prior art is a difference “in kind” or a difference “in degree” is not mentioned in section 103. Section 103 simply requires a determination as to whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time of appellants’ invention. An unexpected increase in physiological activity may be persuasive evidence of unobviousness, In re Grier, 342 F.2d 120, 52 CCPA 1081. In all cases it is to be considered along with other evidence of unobviousness. As that court also stated in In re Lunsford, 357 F.2d 380, 384, 53 CCPA 986 (1966): [W]e find no authority in section 103 for treating “improvement” inventions, or inventions differing from the prior art only “in matter of degree,” any differently from other types of inventions .... [W]e are inclined to agree with appellant that inventions of the type here involved are frequently made only after the expenditure of vast amounts of research time and effort; in short, they represent the very kind of invention some industries, most notably the drug industry, seek in order to obtain, or maintain, the kind of competitive advantage which promotes progress in the “useful arts.” Furthermore, like the Patent Office, we have frequently found novel chemical processes producing the same product, but in unexpectedly higher yields, to be patentable by reason of that yield, a “matter of degree.” Should not chemical products, also displaying an unexpectedly higher degree of effectiveness, be treated in like manner? At the time of Pfizer’s application, it showed to the satisfaction of the Patent Examiners that it had a degree of antimicrobial activity superior to that of the McCormick compound, at that time the closest prior art of the patented tetracyclines. Dr. English’s affidavit before the Patent Office demonstrated the superiority of dox-ycycline over the McCormick compound in vitro in 18 of the 23 organisms tested. While MIC values, like other biological measurements, are subject to some variation, they are valuable for comparative purposes. By comparing the activity of two compounds against 23 organisms (as was done by Pfizer), one skilled in the art is given an indication of the relative activity of the 2 compounds. The multitude of comparisons also adds reliability to the claimed effectiveness of the drug. Dr. McBride’s affidavit showed an oral PD50 for the McCormick compound of 22 mg/kg and an oral PD50 for doxycycline of 0.60 mg/kg. Those results demonstrated to the Patent Office and to this court that doxycycline was a much more active antibiotic than the previously patented McCormick compound. In 1964 Dr. English for Pfizer conducted tests involving staph 5 MP (mouse passed and multiple dosing). The purpose of mouse-passing is to render the culture more virulent and it generally requires a greater ■dosage of antibiotic to attack infection caused by mouse-passed culture. For this reason, PD50 data based on MP cultures would generally show different data from that derived from non-MP cultures. The English 1964 oral PD50 for doxycycline against staph 5 MP, though reported at the time as 2.55 mg/kg, should have been 1.43 mg/kg. Both the 1962 PD50 of 0.60 and the 1964 PD50 of 1.43 mg/kg based upon mouse-passed culture, show the unusually high oral potency of doxycycline when compared to the McCormick compound with an oral PD5o of 22 mg/kg. This court finds that IR’s argument of obviousness on the basis of its expected antibacterial activity and stability is without merit. II. RUTHENIUM AS A CATALYST IR next maintains that Pfizer fraudulently claimed the use of ruthenium as a catalyst for preparing doxycycline. Pfizer’s application stated on page 3: The noble metal catalysts as employed in the present invention include platinum, palladium, rhenium, rhodium and ruthenium, as well as the known catalytic compounds thereof such as the oxides, chlorides, etc. ... Examples of preferred catalysts are 5% palladium-on-carbon, 5% platinum-on-carbon, 5% rhodium-on-carbon, platinum chloride, palladium chloride, platinum oxide and ruthenium oxide.... Thereafter on page 4 appears: Rhodium is the preferred catalyst for the process of the present invention since it produces the highest overall yield of 6-epi-6-deoxy [alpha-6-deoxy] and 6-deox-ytetracyclines [beta-6-deoxytetracyclines] ... however, the other noble metal catalysts are entirely operative to obtain both 6-epi-6-deoxy and 6-deoxytetracyclines. On page 10 appears: In summary of the process of the present invention, it will be appreciated that it not only provides a convenient means for producing new and useful 6-epi-6-deoxytetracyclines but in addition, also produces known 6-deoxytetracy-clines. Whereas the latter compounds may be produced by hydrogenation of a parent tetracycline antibiotic, i.e., one containing both a 6-methyl and a 6-hy-droxy substituent, the procedure of the present invention is preferred since the yields thereof are substantially higher than those obtained by the known procedure. IR maintains that: Blackwood, Stephens, Rennhard, Beere-' boom and von Schach ... knew that they had been unsuccessful in using ruthenium as a catalyst for the methacycline hydrogenation process in six attempts over a more than seven months period prior to the filing of the doxycycline application and in seven additional attempts over a year-and-a-half period during the penden-cy of the application. The thrust of IR’s argument is that Pfizer knew that ruthenium would not work as a catalyst but nevertheless included ruthenium in its application to prevent others from using it. Even this illogical approach, however, is not borne out by the evidence of the 13 early Pfizer experiments using ruthenium as a catalyst. Contemporaneous notebook entries of six experiments show that ruthenium catalyzed the reaction and five show that either beta or alpha 6-deoxy tetracycline was formed and on the paper-grams of another ruthenium-catalyzed hydrogenation a spot was found in the doxy-cycline region. In his January 1961 monthly report, Dr. von Schach reported, “Although the results are not quite as clear cut as stated, we found that palladium and ruthenium catalyzed the hydrogenation of the double bond very slowly.” A detailed experiment-by-experiment analysis of the evidence on those referred to by IR as having failed (the contents of which are as set forth by Pfizer in its Post Trial Brief, pp. 129-133) does not permit the conclusion that ruthenium could not be used as a catalyst as claimed. This court concludes that Beereboom’s monthly report of September 25, 1961, stating that ruthenium will not work under the conditions used, was not intended to indicate that it could not work but that ruthenium did not produce commercially satisfactory yields. This court reaches the same conclusion concerning Dr. Beereboom’s and Dr. von Schach’s joint report of December 18, 1961. It, too, concerned itself with “the most practical synthetic routes to GS 3065” (doxycycline) and “concerned itself with the commercial preparation” of doxycycline. The statement in that report that “catalysts such as ruthenium and Raney nickel .. . have failed to give the desired reaction” was intended to refer to the efficient production of larger quantities of doxycycline. This court accepts. as true Dr. von Schach’s statement that if that report were to be interpreted as stating that ruthenium had failed to catalyze the reaction and produce doxycycline, then such interpretation would be “clearly inaccurate”. This court finds that ruthenium could and would catalyze the reactions as claimed. To confirm Pfizer’s reference to the use of ruthenium was Dr. Murai’s report that “a reasonable quantity of 6-(alpha)-deoxy-tetracycline (0.5g) has been isolated from crude hydrogenation product of GS2830 (309).” Ruthenium was the catalyst used in that hydrogenation. The only references in the patent showing yields of doxycycline are found in Examples 32 and 33 and both of those examples specifically recite the use of rhodium as the catalyst, which the patent explicitly stated was the preferred catalyst. Nowhere in the file wrapper could this court find that Pfizer had made any representation regarding the yield of doxycycline if ruthenium was used as a catalyst. Examiner Adams was questioned in reference to the above-quoted sentence in the patent application beginning, “Rhodium is the preferred catalyst”, et cetera: “Q. From reading the application during the time you were with the Patent Office, did you understand that ruthenium would also produce high yields of doxycycline?”, Adams replied, “No.” He further testified that he would have understood from the application “that you could produce 6-epi and 6-deoxy tetracycline with the ruthenium catalyst in at least recoverable amounts, useful amounts.” In the cross examination of Examiner Adams by IR’s counsel Cohen, in response to the question: “[Ajssuming that all of Pfizer’s experiments using ruthenium as a catalyst had failed to produce any alpha-6deoxytetracycline”, Adams stated that he would have rejected the process claims which included ruthenium as a catalyst. Upon re-direct examination, he was asked: Q. Now, I would like you to assume this set of facts: I would like you to assume that applicant’s assignee and the applicant had conducted various experiments hydrogenating materials specified in the process claims of the doxycycline application, using ruthenium as the catalyst, under various conditions. I would like you to assume further that, under some reaction conditions, there did not appear to be evidence that the starting material was successfully hydrogenated. Assume further that in other instances, within the scope of the process claims ruthenium did catalyze the reaction. And assume that in some instances there was evidence that 6-epi-6-deoxytet-racyclines were produced, including doxy-cycline. Lastly assume that the applicant and applicant’s assignee believed, based upon their knowledge and experience in the tetracycline art, that ruthenium would catalyze the hydrogenation, and that 6-epi-6-deoxy-tetracyclines, including doxy-cycline, would be produced thereby. Now, if you had rejected claims 1, 4, 5 and 8 for inoperability and these facts were established in response to your rejection, would you have maintained the rejection? ^ s}; "k A. No. On the facts that they have stated, they have shown that ruthenium can catalyze the reaction, and they continued to believe that it can. Adams further testified: Q. Mr. Adams, what was your view during the time of the prosecution of the doxycycline patent application regarding whether an applicant had an obligation to call to the attention of the Patent Office experimental failures if the applicant had a reasonable basis to believe the invention, as claimed, was operable and could be practiced through use of ordinary knowledge and skill in the art? A. My view was he had no obligation to call such failures to the attention of the Patent Office. Q. And what was your view regarding whether an applicant, who had experienced experimental failures, had to conduct successful experiments before he could claim the subject matter? A. My view, then as now, is that there is no requirement to conduct any experiments, successful or otherwise, in order to obtain a patent application. That is it. MR. COHEN: May I hear that question and answer, please. (A portion of the record was read back by the reporter.) Q. What do you mean by “to obtain a patent application?” A. Should be “to obtain a patent.” Conclusion IR has failed to sustain its burden of proving its claim that Pfizer fraudulently claimed the use of ruthenium as a catalyst for preparing doxycycline by “clear, unequivocal and convincing evidence”. III. THE EXAMPLE 35 PROCESS In connection with its claim of inoperability, IR maintained that Pfizer fraudulently claimed the Example 35 process for making 7-chloro doxycycline. Example 35 teaches the preparation of 7-chlo-ro doxycycline (7-chloro-6-epi-6-deoxy-5-ox-ytetracycline) by hydrogenating 7-chloro methacycline (7-chloro-6-deoxy-6-demethyl-6-methylene-5-oxytetracycline). IR maintains that all of Pfizer’s 25 experiments failed to make 7-chloro doxycycline by the Example 35 process or by analogous processes which should have also produced some 7-chloro doxycycline. IR points out that Beereboom’s monthly reports of April and May 1961 state that “all attempts and efforts” to produce 7-chloro doxycycline by the Example 35 techniques were unsuccessful. IR maintains that Pfizer had the duty to disclose its failure and any excuses therefore to the Patent Office. IR also maintains that Pfizer knew that the 7-chlo-ro group in the tetracycline molecule was highly susceptible to removal upon catalytic hydrogenation, but that Pfizer, with such knowledge, nevertheless retained Example 35 in the doxycycline application and issued claims embracing the Example 35 process for making 7-chloro doxycycline without disclosing those facts or its experimental failures to the Examiner. IR then maintains that Pfizer had no factual basis for a good faith belief that Example 35 worked. IR maintains that Pfizer’s conduct in not presenting the facts of its failure to make 7-chloro doxycycline by Example 35 technique constitutes fraud upon and inequitable conduct before the Patent Office. While IR lists 25 hydrogenations of 7-chloro methacycline which it claims failed to make 7-chloro-doxycycline, a detailed analysis of those experiments shows that most of them employed palladium catalyst which is not recommended for retention of the 7-chloro substituent. In all but one of the rhodium-catalyzed hydrogenations cited residual sulphur in the starting material poisoned the catalyst thus defeating the hydrogenation. The purpose of Dr. von Schach’s hydrogenations were specifically designed to produce methacycline by removing the 7-chloro substituent. Dr. von Schach did not attempt to make 7-chloro doxycycline in any of those experiments. In his November-December 1963 bimonthly report (one of three consecutive reports; IR 775-776-777), he ' reported several possibilities for the preparation of tritium labeled GS 2876 were explored (see p. 147, Pfizer’s PTB). Dr. Beereboom testified that a review of his early notebooks and monthly reports satisfied him that his experiments had produced indication of the formation of 7-chloro doxycycline. Three of those experiments involved the hydrogenation of 7-chloro methacycline (GS 2829) and the others involved hydrogenation of 7, lla-dichloro methacycline (GS 2988) (both processes are disclosed in the doxycycline patent). Although IR maintained that the hydrogenation of GS 2988 was “not an issue in this case” since the patent Example 35 starts with GS 2989, Dr. Beereboom testified: [I]t was well established that the first thing that would happen in the hydrogenation of GS 2988 would be the generation of GS 2989. So from the practical standpoint while I was conducting these experiments and it is my belief today the hydrogenation of 2988 is equivalent to the hydrogenation of 2989. It is to be noted that Patent Example 6B stops the hydrogenation of GS 2988 at the point where the lla-chloro group has been removed and isolates GS 2989. Thus, as Dr. Blackwood testified the hydrogenation of GS 2988 to 7-chloro doxycycline proceeds via the hydrogenation of GS 2989. As Dr. Beereboom testified, he fully expected 7-chloro doxycycline to be formed by the process set forth in Example 35. This court is satisfied that Pfizer’s chemists had produced '7-chloro doxycycline by that method. IR has placed great emphasis on statements made by Examiner Adams in the course of his examination by IR’s counsel during deposition discovery. IR’s questions to Adams asked that he assume that Pfizer’s Claims I, II, and IV included hydrogenating 7-chloro methacycline to make 7-chloro doxycycline, and that all of Pfizer’s experiments thereon failed. Based upon that assumption, Adams testified that if Pfizer did not demonstrate it had in fact succeeded in preparing 7-chloro doxycycline by the Example 35 technique or demonstrate a factual basis for a good faith belief that 7-chloro doxycycline could be thus prepared, he would have made that rejection final. As indicated heretofore, Pfizer has satisfied this court that it had a factual basis for a “good faith” belief that 7-chloro doxycycline could be prepared by the Example 35 technique, and that it had in fact succeeded in so preparing it. Even if this were not so, Examiner Adams thereafter testified that it is not necessary for an applicant to actually have produced a product or performed a process in order to claim it. He said, My understanding, at the time I was in the Office, at the time — at the present time, is that there is no requirement under U. S. Law for a patent applicant to have ever done anything in the laboratory to claim either a chemical process or a chemical product. 35 U.S.C. § 112 requires only that the applicant describe his invention and teach how to make and use the same. If an applicant believes that, in “carrying out a chemical process — in good faith believes that, in carrying out a chemical process, a certain result will follow and claims that process and/or the results that follow, to my knowledge, that is all that is required in order for him to file an application.” He continued, If, in spite of failure to make 7-halo, Pfizer scientists were still of a good-faith belief that the 7-halo derivative could be made by processes that they have described, then I think that would have been a — certainly a proper basis for them to have claimed the subject matter, and it also would have been a response to a rejection made. * ífc $ * * . .. [T]he question I would have raised: [is] inoperability. And if the applicant comes back and says, “You are wrong. It works,” then that is an adequate response. Underlying IR’s charges of fraud or inequitable conduct in both the preceding ruthenium and this Example 35 issues is its claim that Pfizer had absolute duty to call the Examiner’s attention to each and every failure. The 8th Circuit, in its opinion preceding this trial, stated: In the instant case, the District Court adopted a far-reaching interpretation of the doctrine [that parties to a Patent Office proceeding have an uncompromising duty to report to it all facts concerning possible fraud or inequitableness underlying the application] emanating from what the court described as an obligation on Pfizer’s part to disclose to the Patent Office any fact that “may be relevant to an issue of patentability.” Further, the court held that the defendants in proving Pfizer’s breach of this obligation were not required to prove that Pfizer intended to deceive the patent examiners, and that Pfizer’s claims of good faith are immaterial and do not create genuine issues of fact. We believe this interpretation imposes an unworkable standard of conduct upon the patent applicant and expands the inequitable conduct defense beyond legitimate limits ... to result in refusal to enforce a patent, the misconduct must be accompanied by “some element of wrongfulness, willfulness, or bad faith” This court finds nothing arising out of the fact that Pfizer did not advise the Patent Office of a 11 of its experiments, good or bad, involving either ruthenium or Example 35 that manifested any element of wrongfulness, willfulness, or bad faith required for patent invalidation. IR has failed to sustain its burden of proving its claim that Pfizer fraudulently claimed the Example 35 process for making 7-chloro doxycycline by “clear, unequivocal and convincing” evidence. IV. PRIOR ART INHERENT COPRO-DUCTION IR’s fourth claim is that Pfizer fraudulently concealed the issue of the prior art inherent coproduction of doxycycline and fraudulently misrepresented the results of its coproduction experiments. PFIZER’S PC 3597 APPLICATION Not alone during its discovery procedures but also during the trial IR devoted a great deal of time and effort exploring into all facets of Pfizer’s PC 3597 application series. In its Post Trial Brief IR devoted 15 pages in an attempt to show that less than a year after the filing of its PC 3597 application in December 1957, Pfizer became aware that during Dr. Stephens’ continuing experiments in the hydrogenation of OTC he “believed” that he had coproduced what ultimately became known to be both beta and alpha doxycyclines. IR’s Post Trial Brief sets forth certain actions of Oglesby before the Patent Office, as well as his intraoffice and Pfizer communications to attempt to show that Pfizer concealed such coproduction. IR also charges that Oglesby “salted” his October 2, 1959 memo to cover up the whole issue of coproduction. At the top of its 15th page, however, IR makes this statement: “.. . the P.C. 3597 series and the interference are not important because of any final result . Nevertheless, IR continues on in its brief to maintain that it was significant because (a) during that period of 1957-1959 Oglesby and Pfizer learned that “as a matter of future policy the Patent Office would apply a speculated prior art inherent coproduction rejection and require proof to the contrary”; (b) Pfizer relied on paper chromatography as evidence to both prove and disprove inherent coproduction; (c) Oglesby and Pfizer suppressed prior art relevant to the coproduction issue, suppressed evidence of the fact of the coproduction, and Pfizer (d) violated its duty to conduct all business before the Patent Office “in writing”, and make a written record of the substance of the several alleged interviews. From all of this, IR charges that Oglesby followed that same pattern of deliberately and willfully misleading the Patent Office in attempting to secure Pfizer’s 4429F claims to alpha 6-deoxy-oxytetracycline. As indicated heretofore, the chemists of Pfizer and Cyanamid were each seeking to develop new derivatives from tetracyclines. As soon as one isolated any compound, it would race to the Patent Office to file a patent application and then run to secure patents elsewhere in the world. In the course of Pfizer’s own research program, in 1952 and for some time thereafter, Pfizer’s Drs. Conover and Stephens worked on tetracyclines. In 1957 Dr. Stephens initiated a program involving the hydrogenation of OTC and other fermentation tetracyclines and in the course of his experiments detected the presence of (beta) doxy-cycline by paper chromatography. As a result, Pfizer filed its PC 3597 application on December 2,1957. In the PC 3597 application, Pfizer claimed beta doxycycline (6-deoxy-5-oxy-tetracycline), 6-deoxytetracy-cline, 7-chloro 6-deoxytetracycline and processes for making them by hydrogenating the fermentation-produced tetracy-clines, e.g. OTC. Pfizer filed foreign counterparts of the PC 3597 application in a number of countries, and Pfizer’s Pakistan Patent # 108,981 was granted on June 17, 1959. The Pakistan Patent thereby became prior art. Certain of the product claims of the PC 3597 application were rejected by the Patent Examiner on the ground that Cyanam-id’s United States patent involving hydrogenation of tetracycline and Cyanamid’s Australian (Boothe) Patent directed to hydrogenating CTC would respectively inherently coproduce Cyanamid’s 6-deoxytetracy-cline and 7-chloro-6-deoxytetracycline. Stephens, however, subsequently determined that 7-chloro-6-deoxytetracycline was not produced by the hydrogenation process of either the Australian Patent or Pfizer’s own PC 3597 application. Oglesby therefore did not respond to the Examiner’s rejection in PC 3597 but instead, on November 12, 1958, filed the PC 3597A application claiming only 6-deoxytetracycline. Dr. Stephens and Coproduction — PC 3597A and C; Paper Chromatography Because of IR’s claim that Pfizer concealed Dr. Stephens’ “coproduction” from the Patent Office during the prosecution of its PC 3597 series and thereafter continued such concealment in the prosecution of its PC 4429F application, it becomes necessary first to evaluate IR’s claim as it applies to the PC 3597 series. Later its similar claim concerning Pfizer’s PC 4429F application will be covered. The coproduction issue in Pfizer’s 3597A as well as its C applications followed from the observation by Pfizer’s Dr. Stephens in his May 16, 1958 laboratory notebook: “Speculations on possibility of 6-deoxy-ter-ramycin isomer ... search for another isomer”, i.e., alpha doxycycline. He therein referred to an Rf 0.5 spot on the paper-grams of his OTC reaction product and expressed the view that “this new spot could be a C-6 epimer.” Based upon this initial speculation, Stephens attempted to isolate and identify the Rf 0.5 component. This attempt on his part became what was called the Stephens’ 1958 Campaign. During 1958 and 1959 Dr. Stephens detected but never absolutely identified an Rf 0.5 component in the reaction products of over 50 hydrogenations of OTC. From his first report on hydrogenation of tetracycline of May 16, 1958, in his monthly report of May 1958, in his bimonthly report of September-October 1958, in his notebook report of October 16-28, 1958, in his bimonthly report of October-November 1959, it appears that Dr. Stephens was never certain that his experiments had actually produced “the long-sought 6 epimer.” As stated above, his May 16,1958 laboratory notebook is headed: “Speculations on possibility of 6-deoxy-terramycin isomers ... search for another isomer.” In that report, he indicates that his papergrams had shown biologically active spots indicating a possible isomer of “6-deoxy-terra” in the “Rf .5 zone,” i.e., Rf .46-Rf .5 in 6-deoxy crude. His report of that month states that his papergrams “of numerous 6-deoxy-ter-ramycin preparations” revealed the “presence of a small amount of at least one additional new biologically active substance. It is conceivable that this is a C-6 epimer of deoxy terramycin.” In his bimonthly report of September-October 1958 he reports, “Concerning 6-deoxy compound developments ... trace amounts of an additional antibiotic substance have been previously observed ... in 6-deoxy terramycin reaction mixtures ... this ... is being investigated.” A year later, in his bimonthly report of October-November 1959 he reports, “Active trace impurity (possibly the C-6 ep-imer) in 6-deoxy-terramycin has been isolated as an almost pure concentrate. ... ” Nevertheless, when Pfizer filed its PC 3597A application, it modified Example I of its PC 3597 application (directed at the hydrogenation of OTC), additionally referring therein to the detection of “a trace of an additional active entity . .. having Rf 0.5 .. . this product may be the C-6 epimer of 6-deoxy-5-oxytetracycline.... ” This reference was based on Dr. Stephens’ experiments. In the first Office Action in PC 3597A the patent Examiner rejected the 6-deoxy-tetracycline claim on the ground of prior art inherent coproduction, relying, this time, solely on Cyanamid’s United States patent as inherently producing the same. On September 24,1959 Pfizer filed its PC 3597C application, and again using Example I of PC 3597A, stated that “an additional active entity appears on the papergram” which “is thought to be the C-6 epimer.” Oglesby and Patent Office Future Policy At the same time, Pfizer was seeking to involve its PC 3597A application in the patent interference previously declared with Cyanamid on the related 6 DMDO compound. On September 21, 1959 Oglesby interviewed Mrs. Merker, as well as Mr. Marcus, Acting Primary Examiner of Division 6, the two Examiners who were then handling both the interference and the PC 3597A application. In an intraoffice “memo” to Hutz, Oglesby reported that interview: [I]n a generalized discussion precipitated by their mention of the F.T.C. hearing, these Examiners made it clear that the future policy of Division 6, as approved by Lidoff, would be to refuse allowance of a claim directed to a compound per se inherently produced by a prior art reference even though such compound was undetected and unrecovered by the reference and irrespective of the amount produced, i.e., assuming that the amount was, of course, detectable [emphasis added] ... I made it clear that I disagreed with such rejections. That memo also notes, “No mention was made of the Cyanamid Australian patent which was cited and applied in PC 3597 but not cited in PC 3597A.” Also in evidence is a letter dated September 23, 1959 from Oglesby in Wilmington, Delaware, to Dr. Carnahan of Pfizer in Brooklyn referring to PC 3597A. In it, Oglesby wrote: The Australian patent of Cyanamid as cited in PC 3597 was discussed with Dick Hutz and we concluded that we were neither morally nor legally obligated to call the reference to the Examiner’s attention for the reason that we are convinced that 6-deoxytetracycline is patentable over any minor amount of that compound which may have been coproduced with tetracycline. If the next Office Action applies this reference, we will then be forced to argue our position and the chances are good that Division 6 will not accept such argument and that it will be necessary to appeal to the Board of Appeals. Also, Oglesby wrote: “[Pjlease see if it is possible to locate a foreign patent corresponding to the Australian Cyanamid patent but of a date early enough to be a statutory bar against the two pertinent Cyanamid applications which were filed on March 1, 1957.” In his September 22, 1959 memo Ogles-by noted: “Subsequent to the above [i.e., subsequent to his discussion with Merker and Marcus on the day before] and at my request Bob Carnahan now advises that he has located the Belgian counterpart of the referred to Cyanamid Australian patent.” The letter dated September 23 also bears a “9/23/59” stamp in Pfizer’s legal division even though the letter was mailed and not hand-delivered. Because Oglesby’s September 22 memo notes the receipt of the information from Carnahan which he purportedly requested in the letter dated September 23, and because no mention was made in that letter of the stated “future policy” of Division 6, this court concludes that the letter dated September 23 was in fact dictated before the September 21 interview with the Patent Office and was, in the ordinary course of office handling, typed and sent thereafter. This court does not accept it, therefore, as representing the state of mind of Hutz and Oglesby after they had received notice of the “future policy.” This conclusion is further bolstered (without inferring thereby that any more bolstering was needed) by what this court accepts as a fact, viz., that on October 1, 1959 Oglesby did call the Australian reference to the Examiners’ attention, as indicated below. The Examiners’ “future policy” lasted only until October 1, 1959. In his memo report of October 2, 1959 on an interview with Mrs. Merker and Mr. Marcus on October 1, 1959 Oglesby stated: “Mr. Marcus pointed out that they would not rely on inherent coproduction unless there was some suggestion in the reference that the claimed compound might be produced, i.e., the division would not apply such a reference unless there was a reasonable indication from the reference itself of coproduction .... ” In any event, the Cyanamid Australian (Boothe) patent and its Belgian patent counterpart was brought to the Examiner’s attention on October 1, 1959. Oglesby then made a bona fide analysis of the reference in the Australian patent relative to the uptake of 1.15 moles of hydrogen in the process and as to whether that could be considered as suggesting coproduction of 6-deoxytetracycline (ultimately). When Mrs. Merker inquired if Pfizer had repeated the pertinent example, Oglesby replied “yes”, but explained that it was a very preliminary effort and that Pfizer would not like to go on the record as to Pfizer’s findings of an indication of coproduction since no qualitative nor quantitative work had been done. When Oglesby asked if the discussion should be made a matter of record, Acting Chief Marcus suggested that nothing be done until the Solicitor Schim-mel had reached a decision as to the values of certain Conover (Pfizer) depositions and the Boothe patent as prior art reference. That the Patent Office was confused and uncertain as to how far it should expand its interpretation of the “von Bramer doctrine” is shown not only by the above shifts on the part of Examiners Merker and Marcus but by the inaction on the part of the Solicitor which followed. After the October 1 conference, Oglesby made repeated efforts through Acting Chief Marcus to get a ruling from the Solicitor. On November 24, 1959 Acting Chief Marcus informed Oglesby that when the Solicitor decided the matter then the Australian reference would or would not be applied, depending upon the Sol