Eiselstein v. Frank

• Decision Date: 11 April 1995
• Docket Number: No. 94-1374,94-1374
• Citation: 34 USPQ2d 1467,52 F.3d 1035
• Parties: Herbert L. EISELSTEIN, Jerry A. Harris, Darrell F. Smith, Jr., Edward F. Clatworthy, Stephen Floreen and Jeffrey M. Davidson, Appellants, v. Richard B. FRANK, Terry A. Debold, Sunil Widge and James W. Martin, Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1035

52 F.3d 1035

34 U.S.P.Q.2d 1467

Herbert L. EISELSTEIN, Jerry A. Harris, Darrell F. Smith Jr., Edward F. Clatworthy, Stephen Floreen and Jeffrey M. Davidson, Appellants, v. Richard B. FRANK, Terry A. Debold, Sunil Widge and James W Martin, Appellees.

No. 94-1374.

United States Court of Appeals Federal Circuit.

April 11, 1995.

Francis J. Mulligan, Jr., Inco Patents and Licensing, Saddle Brook, NJ, argued for appellants.

Francis A. Paintin, Woodcock Washburn Kurtz MacKiewica & Norris, Philadelphia, PA, argued for appellees.

Nancy J. Linck, Sol., Albin F. Drost, Deputy Sol. and Richard E. Schafer, Acting Associate Sol., Arlington, VA, were on the brief for amicus curiae, Comm'r of Patents and Trademarks.

Before PLAGER, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Herbert L. Eiselstein et al. appeal from a decision of the Board of Patent Appeals and Interferences in interference number 102,601, holding claims 1-19 of United States Patent 4,788,036 unpatentable under 35 U.S.C. Sec. 102(b). Because the Board properly denied Eiselstein et al. the benefit of an earlier application's filing date under 35 U.S.C. Sec. 120 with respect to claims 1-7 and 19, but erred in denying Eiselstein et al. the benefit of that filing date with respect to claims 8-18, we affirm in part and reverse in part.

BACKGROUND

This appeal involves an interference between United States Patent 4,788,036, naming Appellants (collectively "Eiselstein") as inventors, and United States patent application serial number 869,138, naming Appellees (collectively "Frank") as inventors. The Eiselstein patent issued on November 29, 1988 from application serial number 914,137, filed October 1, 1986 (the "Eiselstein application"). The Eiselstein application was a continuation-in-part of application serial number 566,601 (the "parent application"), filed December 29, 1983, which in turn was a continuation-in-part of application serial number 255,158 (the "grandparent application"), filed April 17, 1981. Eiselstein is also the named inventor on European Application 066361 (EP'361), published December 8, 1982, which corresponds substantially to the grandparent application. Frank was designated the senior party in the interference based upon the earlier May 30, 1986 filing date of his application.

The subject matter in interference is a nickel-based alloy having high strength, ductility, and resistance to corrosion. The alloy may be used for, inter alia, production of tubing and associated hardware for deep sour gas and oil well applications. The dispute A nickel-base alloy consisting essentially of, in weight percent, about 15 to 25% chromium, up to about 20% iron, about 6.5 to 12% molybdenum, about 2 to 6% columbium, from 0.5 to 2.5% titanium, up to about 1% aluminum and the balance nickel with nickel being at least about 50% of the alloy [emphasis added]. ¹

centers on the nickel content of the claimed alloy. Count 1, the sole count, reads:

Two representative claims of the Eiselstein patent read as follows:

1. A nickel-base alloy ... said alloy consisting essentially of, in weight percent, about 15 to 25% chromium, about 5 to about 15% iron, about 6.5 to 9% molybdenum, about 2.5 to 5% columbium, from 0.5 to 2.5% titanium with the proviso that when the titanium is less than 1% the columbium is at least 3.5%, up to about 0.5% aluminum and the balance nickel with nickel constituting about 50 to about 60% of the alloy [emphasis added].

15. A nickel-chromium-iron base alloy ... said alloy consisting essentially of from 15% to about 25% chromium, about 5% to about 15% iron, about 6.5% to 9% molybdenum, about 2.5 to 5% columbium, from 0.5 to 2.5% titanium, with the proviso that when the titanium is below 1% the columbium is at least 3.5%, up to about 0.5% aluminum and the balance nickel, the nickel being from about 45% to about 55% of said alloy [emphasis added].

Claim 1 is representative of claims 1-7 and 19. Claim 15 is representative of claims 8-18.

In the interference, the Examiner-In-Chief (EIC) held that Eiselstein's claims 1-7 and 19 were anticipated by EP'361 and hence were unpatentable under Sec. 102(b). In so holding, the EIC denied Eiselstein's claim under Sec. 120 for benefit of the grandparent application's filing date. The EIC determined that the grandparent did not satisfy the written description requirement of 35 U.S.C. Sec. 112 for claims 1-7 and 19 because it described a nickel content of 45 to 55% weight percent, not about 50 to about 60%, as required by those claims.

The Board upheld this determination and further held that Eiselstein's claims 8-18 were also unpatentable under Sec. 102(b). The Board determined that, because the grandparent application did not use the word "about" in reference to the nickel content of the alloys described, the invention of claims 8-18 was not described therein and these claims could not be accorded the filing date of the grandparent application. Thus, while EP'361 did not contain a disclosure of claims 8-18, it did describe subject matter within the scope of the claims, and the claims were therefore held to be anticipated by EP'361. The interference resulted in a determination by the Board that Eiselstein was not entitled to a patent on any of his claims.

In its decision, the Board advised Eiselstein et al. that they could

file an application for reissue of their patent for the sole purpose of claiming alloys containing "the balance essentially nickel in a weight proportion of 45% to 55% of said alloy." Eiselstein et al. are given two (2) months from the date of this decision in which to file their application for reissue.

Within the two-month period specified by the Board, but later than the one-month regulatory time limit for filing a Request for Reconsideration of a Board decision, see 37 C.F.R. Sec. 1.658(b), Eiselstein filed a Request for Reconsideration to contest the Sec. 102(b) rejection of claims 8-18. The request was dismissed as untimely in the absence of a showing of sufficient cause. See 37 C.F.R. Sec. 1.645(b). Eiselstein's subsequent Request for Reconsideration and Petition to the Commissioner asking for relief from the dismissal of the Request was denied. Eiselstein now appeals pursuant to 35 U.S.C. Sec. 141. ² We have jurisdiction over the appeal under 28 U.S.C. Sec. 1295(a)(4)(A).

DISCUSSION

"A person shall be entitled to a patent unless[, inter alia, ] the invention was ... described in a printed publication in ... a Eiselstein first argues that the Board erred in rejecting claims 1-19 under Sec. 102(b), asserting that he was entitled to claim the benefit of the filing date of his grandparent application pursuant to Sec. 120. Eiselstein also argues that the Board did not afford him procedural due process when it rejected claims 8-18 under Sec. 102(b) for the first time in its final decision. In Eiselstein's view, the Board did not afford him an adequate opportunity to respond to the Sec. 102(b) rejection because it did not explicitly set a time for him to respond and it effectively left him only the option of filing a reissue application, thereby causing him to impliedly admit the soundness of the rejection. Because we agree with Eiselstein that the Board's rejection of claims 8-18 was in error, we need not address Eiselstein's procedural argument and we turn directly to the merits.

foreign country ... more than one year prior to the date of the application for patent in the United States." 35 U.S.C. Sec. 102(b). Whether patentability is barred by Sec. 102(b) is a question of law to be determined based upon underlying factual determinations. See United States Envtl. Products Inc. v. Westall, 911 F.2d 713, 715, 15 USPQ2d 1898, 1900 (Fed.Cir.1990).

The correctness of the Board's rejection of claims 1-19 under Sec. 102(b) depends on whether or not Eiselstein's grandparent application satisfies the written description requirement of Sec. 112, p 1, for the subject matter of those claims. Compliance with the "written description" requirement is a question of fact, to be reviewed under the clearly erroneous standard. Id. If that requirement is met, claims 1-19 are entitled to the benefit of the grandparent's filing date under Sec. 120. ³ Since the Patent and Trademark Office relied only on EP'361 to invalidate the claims under Sec. 102(b), entitlement to the filing date of the grandparent application would enable Eiselstein to antedate EP'361, thereby removing it as a reference against the claims. ⁴

The first paragraph of Sec. 112 reads as follows:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

35 U.S.C. Sec. 112, p 1 (emphasis added).

"Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1115 (Fed.Cir.1991) (quoting In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 623-24 (CCPA 1973)). In order to determine whether a prior application meets the "written description" requirement with respect to later-filed claims, the prior application need not describe the claimed subject matter in exactly the same terms as used in the claims; it must simply indicate to persons skilled in the art that as of the earlier date the applicant had invented what is now claimed. Id. at 1563, 19 USPQ2d at The first question we must address is whether the Board clearly erred in determining that Eiselstein's grandparent...