Application of Borkowski

• Decision Date: 23 January 1975
• Docket Number: Patent Appeal No. 74-564.
• Citation: 505 F.2d 713
• Parties: Application of Walter L. BORKOWSKI and John J. vanVenrooy.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

505 F.2d 713

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

Patent Appeal No. 74-564.

United States Court of Customs and Patent Appeals.

November 27, 1974.

Rehearing Denied January 23, 1975.

Barry A. Bisson, Wilmington, Del., attorney of record, for appellants.

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° 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:O2 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 solid 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 decision³ 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 CCPA 1340 (1971), as setting forth the proper standard, appellants assert the affidavits are sufficient. Appellants further assert that one of ordinary skill in the art, upon reading the reference in an invention disclosure, affidavit Exhibit 1, to laboratory notebook pages (Exhibit 2), "would have no doubt that they had actually reduced to practice" their invention. Lastly, appellants argue that the board failed to give any weight to the "sworn testimony" in the Rule 131 affidavit as to the interpretation of the attached exhibits.

The Prior Art

Borkowski et al. disclose a process for chlorination of methane by contacting it with ferric chloride (FeCl3) vapor in one reaction zone at a temperature in the range of 220°-800°C. That process of ferrichlorination of methane is admitted as having been described and claimed in an abandoned application of Blair.⁴ Borkowski et al. additionally disclose that solid ferrous chloride (FeCl2) settles out from the reaction products and a portion thereof is removed to another reaction zone. The ferrous chloride is there regenerated into ferric chloride, for recycling to the first reaction zone, by contacting it with HCl and oxygen.

The Rule 131 Affidavit

A principal issue is whether the Rule 131 affidavit overcomes Borkowski et al. as prior art. Appellants there assert that they invented the subject matter of the present application and that they conceived and reduced to practice the disclosed and claimed subject matter of their application prior to the filing date of Borkowski et al. The remainder of the affidavit states:

THAT attached hereto are copies of the following papers which they prepared: (1) an invention disclosure labeled "Exhibit 1"; (2) copies of laboratory notebook pages marked "Exhibit 2"; (3) copies of calculation sheets referring to the data shown in Exhibit 2 and labeled "Exhibit 3," all of which describe a reduction to practice of the process of this application.

THAT Exhibit 2 shows: (1) the temperature profiles of a reactor used in the process of this invention, (2) at page 322141, a bed of ferrous chloride extending from the bottom of the reactor to an intermediate level, (3) the feeding of methane into the reactor at a level above the bed and at a temperature above its boiling point, (4) the methane vapor flowing upward, (5) feeding hydrogen chloride and oxygen into the bottom of the bed in a proportion of HCl:O2 of at least 4:1, (6) the HCl and O2 contacting the bed of ferrous chloride.

THAT Exhibit 2 further shows the running times of the reaction of the invention, the flows of starting materials and vapor phase chromatography, (VPC), runs on the products of the reaction at particular times.

THAT Exhibit 3 shows analyses of some of the vapor phase chromatography runs corresponding to the VPC numbers shown in Exhibit 2 and that these analyses indicate chlorinated hydrocarbon in the product stream and further shows an iron balance on pages 315009, 315012 and 315013 which shows that FeCl2 was converted to FeCl3 which then chlorinated methane with conversion back to FeCl2.

THAT the dates which have been removed from Exhibit 1, Exhibit 2 and Exhibit 3 are prior to the April 13, 1961 filing date of Patent 3,172,915.

Exhibit 1, the invention disclosure, refers under the heading "Reduction to Practice" to certain notebook pages which coincide with pages in Exhibit 2.

Exhibits 2 (seven pages) and 3 (eight pages) appear to be records of laboratory data.

Criticism of the Rule 131 Affidavit

The examiner's criticisms of the affidavit were: (1) there is no showing of how formation of Fe2O3 from the reaction of O2 and HCl with FeCl2 is suppressed or how it is removed except in Exhibit 1 which refers to test run #500; (2) test run #500 with only an O2 feed (no HCl feed) is not within the claims; (3) Exhibit 1 describes a proposal and not a reduction to practice; (4) the affidavit "does not allege that the reduction to practice shown in Exhibits 2 and 3 were sic carried out by applicants or on their behalf"; and (5) only some of the notebook pages of Exhibits 2 and 3 are signed by van-Venrooy, and none is signed by Borkowski.

The board additionally commented that: (1) the exhibits consist in most part of unexplained data; (2) the analysis by vapor phase chromatography (VPC) of two out of approximately 40 periodic samples of the reaction products taken during the test runs is not sufficient to establish any results relative to the remaining samples, and the significance of the two samples has not been explained; and (3) there is no evidence of any conviction of success or appreciation of the reduction to practice.

In response to the above criticisms by the board, appellants submitted a supplemental affidavit with their petition for reconsideration. The board regarded that affidavit as not entitled to consideration, but it did hold that "the proofs submitted under the provisions of Rule 131, when considered as a whole," were not convincing. In the supplemental affidavit, appellants stated in pertinent part:

(5) Additionally, they now present the attached Exhibit 4 to supplement their original exhibits. The said Exhibit 4 is a copy, with dates removed, of a routine progress report, made by the said John J. vanVenrooy to his supervisor, Dr. Paul E. Oberdorfer, Jr., in which the significance of runs 500

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