Farrington v. Mikeska

• Decision Date: 07 May 1946
• Docket Number: Patent Appeals No. 5112,5113.
• Citation: 155 F.2d 412
• Parties: FARRINGTON et al. v. MIKESKA. MIKESKA v. FARRINGTON et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

155 F.2d 412 (1946)

FARRINGTON et al. v. MIKESKA.

MIKESKA v. FARRINGTON et al.

Patent Appeals Nos. 5112, 5113.

Court of Customs and Patent Appeals.

May 7, 1946.

James P. Burns, of Washington, D. C., for Farrington et al.

Wilbur F. Smith, of Elizabeth, N. J. (W. E. Currie and P. L. Young, both of New York City, and W. F. Weigester, of Washington, D. C., of counsel), for Mikeska.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

HATFIELD, Associate Judge.

These are cross-appeals in an interference proceeding from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention of the subject matter defined by count 1 to appellees Farrington et al. in appeal No. 5113, and that of count 2 to appellee Mikeska in appeal No. 5112.

The interference is between application No. 374,078 of Farrington et al. filed January 11, 1941, which is a division of a parent application No. 241,648, filed November 21, 1938, and Mikeska's patent No. 2,219,050, issued October 22, 1940, on an application filed December 31, 1938. Farrington et al. are the senior parties by virtue of the filing of their earlier application. Accordingly, the burden was upon Mikeska to establish priority of invention by a preponderance of the evidence.

The counts in issue relate to mixed ester salts of phosphoric acid in which the alkylaryl groups "constitute the ester portion of the molecule." They read:

"1. A base metal salt of a phosphoric acid ester containing at least one alkylaryl group and a total of 5 to 16 saturated carbon atoms in the alkyl radicals of said alkylaryl groups.

"2. A compound of the general formula

(R-Ar-O)XPO(OM)y

in which R represents at least one alkyl substituent containing an average total of 5 to 16 carbon atoms, Ar represents an aromatic nucleus, M represents a basic metal atom and x and y are whole numbers from 1 to 2, the sum of which is 3."

As stated in the decision of the Board of Interference Examiners, the involved counts are substantially the same as claims 1 and 12 in the Mikeska patent "and differ therefrom only in the upper limit of the number of carbon atoms present in the alkyl substituent; Farrington not having adequate basis for the particular upper limitation of the patent claims" which call for 5 to 20 carbon atoms.

The Board of Interference Examiners accorded Mikeska a date of conception and reduction to practice as of July 1938, on the basis of an experiment performed on his behalf by one George E. Serniuk, a chemist employed by the Standard Oil Development Company, assignee of Mikeska, in which, Serniuk testified, "an attempt was made to prepare a di-tertiary amyl phenyl phosphate as a mono-sodium salt by esterifying tertiary amyl phenol with phosphorus penta chloride." That the desired product was obtained by Serniuk, was indicated by an analysis which showed the phosphorus content to be very close to what is termed the "theoretical value," that is, the amount which would theoretically be present if the product had the desired composition, and also by the "solubility characteristics of the product." Farrington et al. contend that that analysis is insufficient because the amount of each element was not determined. The Board of Interference Examiners held, however, that the tests employed were sufficient to establish the identity of the product as falling within the scope of both counts. That holding, under all the circumstances and in view of the method by which the product was prepared, is, in our opinion, correct.

Farrington et al. also allege that the product was not sufficiently tested to establish a reduction to practice.

The tests made of the product obtained showed satisfactory results as a wetting agent in soft water, which is sufficient in view of the fact that the counts are not limited to any particular use of the product and clearly do not require that it be an effective wetting agent in hard water or in acid solutions. Mikeska, therefore, is entitled to July 1938, when the witness Serniuk completed his experiment, for reduction to practice of the subject matter defined by the involved counts.

The only experiments relied upon here by Mikeska as establishing dates prior to July 1938 are those performed by the witness Frank E. Toonder in 1937, who at that time was an employee of the Standard Oil Development Company.

The results of the Toonder experiments differed from those of the Serniuk experiment in that the phosphorus content of the products varied to a considerable extent from the "theoretical value" of compounds coming within the counts. Although Mikeska argues that this discrepancy was due to impurities, that argument is merely speculative. The evidence submitted does not satisfactorily establish that any product obtained by the witness Toonder was of the kind called for by either of the counts, and it follows that his work is not sufficient to establish either conception or reduction to practice of the subject matter defined by either of the counts in issue.

Mikeska also relies for conception and constructive reduction to practice on an earlier application which matured into patent No. 2,213,588.

That patent, however, merely suggests that compounds of the kind here involved may be prepared by certain steps, which are indicated only generally. No specific examples are given, and there is no statement as to the particular conditions under which the reactions are to be carried out. The fact that the witness Serniuk, working under Mikeska, made a number of unsuccessful attempts to prepare the compounds called for by the counts in issue after the application for the Mikeska...