505 F.2d 713 (Fed. Cir. 1974), 74-564, Application of Borkowski

Docket Nº:Patent Appeal No. 74-564.
Citation:505 F.2d 713, 184 U.S.P.Q. 29
Party Name:Application of Walter L. BORKOWSKI and John J. vanVenrooy.
Case Date:November 27, 1974
Court:United States Court of Customs and Patent Appeals

Page 713

505 F.2d 713 (Fed. Cir. 1974)

184 U.S.P.Q. 29

Application of Walter L. BORKOWSKI and John J. vanVenrooy.

Patent Appeal No. 74-564.

United States Court of Customs and Patent Appeals.

Nov. 27, 1974

Rehearing Denied Jan. 23, 1975.

Page 714

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Gerald H. Bjorge, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, judges.

MARKEY, Chief Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner's rejection under 35 U.S.C. § 103 of claims 1-14 and 24-32 in appellants' application serial No. 621,379, filed January 23, 1967, 1 entitled 'Chlorination of Hydrocarbons.' A Rule 131 affidavit submitted to antedate the sole prior art patent on which the rejection was based was held inadequate. We affirm.

The Invention

Claim 1 illustrates appellants' invention:

1. Method of chlorinating a hydrocarbon which comprises (a) feeding hydrocarbon in vapor phase at an intermediate level into a reactor maintained at a temperature in the range of 315-500 degrees C., said hydrocarbon and its chlorination reaction products being a vapor at the selected reaction temperature and said reactor containing a bed of ferrous chloride extending from the bottom thereof to near the level of hydrocarbon introduction and having a reaction space above the bed, (b) flowing the hydrocarbon vapor upwardly in said reaction space, (c) feeding hydrogen chloride and oxygen into the bottom of said bed in an HCl:O(2) molar proportion of at least 4:1 and flowing the same upwardly in contact with the ferrous chloride, whereby ferrous chloride is continuously converted to gaseous ferric chloride, (d) flowing the gaseous ferric chloride upwardly in said reaction space in contact with the hydrocarbon, whereby chlorination of the hydrocarbon occurs with the formation of by-product hydrogen chloride and the ferric chloride is reduced to sol-

Page 715

id ferrous chloride which falls downwardly to said bed, and (e) withdrawing chlorinated hydrocarbon and by-product hydrogen chloride from the upper part of said reactor.

No separate arguments having been presented in appellants' brief with respect to claims 2-14 and 24-32, those claims stand or fall with claim 1.

The Issues

Appellants assert that the board erred in: (1) failing to find, from the record as a whole, that the relevant disclosure in the Borkowski, Oberdorfer, and Seitzer patent (Borkowski et al.) 2 is not prior art because it is not the invention of 'another'; (2) refusing to consider their supplemental affidavit submitted in response to the board's additional criticism of the Rule 131 affidavit and, hence, denying appellants due process; (3) finding the claims obvious under 35 U.S.C. § 103 over Borkowski et al.; and (4) rejecting the Rule 131 and supplemental affidavits as insufficient to remove Borkowski et al. as prior art. We deal with the issues in the order listed.

Appellants' Arguments

Regarding issue (1) appellants point to affidavits by Seitzer and Oberdorfer, stating that they made no contribution to the claimed invention, as a basis for an inference that the relevant disclosure in Borkowski et al. was derived from Borkowski. The joint oath by appellants in the present application is relied upon as additional support for an inference that the relevant disclosure in Borkowski et al. was derived from appellants.

In arguing lack of due process in their presentation of issue (2), appellants agree that the board had the right under its examining function to make new findings in the form of its additional criticisms of the Rule 131 affidavit. However, appellants contend that under such circumstances 35 U.S.C. § 132 required that the board provide applicants an opportunity to respond to the additional criticisms.

Respecting issue (3), appellants rely on a prior board decision 3 involving an application which is a parent to the present application. In that decision the board reversed a § 103 rejection based on Borkowski et al. Appellants insist that the prior board decision is 'res judicata' and thus binding upon the examiner in this case. If not res judicata, say appellants, that prior decision should at least tip the scales in favor of non-obviousness here. Appellants further argue that the present claims set forth inventions which would not have been obvious over Borkowski et al.

Appellants stress, with respect to issue (4), that the board used improper standards from interference case law to test the sufficiency of the affidavits. Citing In re Moore, 444 F.2d 572, 58 C.C.P.A. 1340 (1971), as setting forth the proper standard, appellants assert the affidavits are sufficient. Appellants...

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