Snitzer v. Etzel

• Decision Date: 08 April 1976
• Docket Number: Patent Appeal No. 75-561.
• Citation: 531 F.2d 1062
• Parties: Elias SNITZER, Appellant, v. Howard W. ETZEL et al., Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

531 F.2d 1062

Elias SNITZER, Appellant, v. Howard W. ETZEL et al., Appellees.

Patent Appeal No. 75-561.

United States Court of Customs and Patent Appeals.

April 8, 1976.

Donald R. Dunner, Lane, Aitken, Dunner & Ziems, Washington, D. C., atty. of record, for appellant. William C. Nealon, Southbridge, Mass., Richard L. Aitken, Washington, D. C., of counsel.

Joseph A. Hill, Vito J. DiPietro, Washington, D. C., attys. of record, for appellees.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.

MILLER, Judge.

This appeal is from the decision¹ of the Patent and Trademark Office Board of Patent Interferences awarding priority of invention of the two counts in issue to the junior party, Etzel et al. (Etzel). The counts were copied by Snitzer² from Etzel's patent No. 3,208,009,³ issued September 21, 1965. The ultimate question, which the board decided against Snitzer, is whether senior party-appellant can make the counts. We affirm.

Subject Matter of the Counts

The invention is a lasing element of a glass laser having a clear glass as the laser-active host medium and trivalent ytterbium ions as the laser-active ingredient. Lasers operate by employing suitable bands of optical pumping energy to excite electrons of certain atoms or ions to higher energy levels. These atoms or ions and a host material (usually a gas or solid) in which they are contained form the "lasing element." The atoms (or ions) and host material combination will act as a lasing element only if a significantly greater number of atoms or ions have electrons in the higher energy levels rather than in the lower levels (i. e. a state of "inverted population," since at equilibrium the lower energy levels are more heavily populated than the higher energy levels). Laser activity occurs when the lasing element, with atoms or ions in a state of inverted population, emits radiation as the electrons descend from the higher, non-equilibrium energy levels to lower levels. Fluorescence, or the emission of radiation in response to the absorption of radiation from some other source, is therefore one requirement of all materials which form a lasing element. However, in fabricating solid lasers, fluorescence alone is not enough to qualify a material as laser-active, since other properties, such as specific higher energy levels and the deviation of the fluorescence from the laser emissive wavelength, also have an effect upon whether a material will lase.

The counts are drawn to a lasing element, consisting essentially of a clear glass activated with trivalent ytterbium ions, which absorbs optical pumping energy at a specific range of wavelengths and exhibits stimulated emission of radiation in a bandwidth centered around a specific wavelength. Count 1 is illustrative and reads as follows:

1. In a laser, a solid luminescent sensitive element of optical regenerative configuration and consisting essentially of a clear glass activated with trivalent ytterbium ions to absorb optical pumping energy in the near infrared region at wavelengths of from 914 to 974 mu and exhibit stimulated emission of radiation in the near infrared region in a waveband of about 6 mu width which has its optical center at 1.015 microns.

Count 2 differs from count 1 solely in that it recites a "clear silicate glass." (Emphasis added.)

Background

In a prior appeal⁴ in this same interference proceeding, this court held that Snitzer's disclosure describes trivalent ytterbium ions contained in a clear glass host medium as the lasing element. Although Etzel had argued that Snitzer's disclosure is speculative because it teaches the suitability of several ions subsequently admitted not to have been used successfully, the court concluded that since the trivalent ytterbium ions are operable, the fact that other listed ions are inoperable is irrelevant in determining whether operable ions are described. However, the court remanded the case to the board to consider whether Snitzer's disclosure described the terminal portion of the counts (viz, "to absorb optical pumping energy in the near infrared region at wavelengths of from 914 to 974 mu and exhibit stimulated emission of radiation in the near infrared region in a waveband of about 6 mu width which has its optical center at 1.015 microns") and whether the disclosure would have enabled one skilled in the art to practice the invention recited in the counts. The court stated that the board on remand should consider

the sufficiency of appellant's Snitzer's specification with respect to the terminal portion of the counts in light of the recent description requirement cases of this court. The board should also consider the sufficiency of appellant's specification as an enabling disclosure of how to make and use the invention of the counts starting with the premise that the use of trivalent ytterbium as a laser-active ion with a glass host is described as such in appellant's specification. Id., 465 F.2d at 903, 59 CCPA at 1247, 175 USPQ at 111.

The Proceedings Below

On remand, the board first considered whether Snitzer's disclosure described the terminal portion of the counts. It found that this portion is neither expressly described in the disclosure nor suggested by the prior art and evidence of record. It also found no evidence that the parameters applicable to lasers known at the time Snitzer's application was filed could be applied to trivalent ytterbium glass lasers without undue experimentation.

The board next considered whether Snitzer's disclosure would have been enabling. It found that while one skilled in the art, using Snitzer's disclosure, could determine the characteristics of the pumping source to obtain laser action with a trivalent ytterbium glass laser, there was still not enough information to construct an operable trivalent ytterbium glass laser without undue experimentation. The board pointed to Snitzer's own affidavit under 37 CFR 1.132 to show the unpredictability, for successful lasing action, of activated glass-like host material. It also found that operating parameters of such a laser, which functions at optical frequencies measured in millimicrons, are so "critically interrelated" that undue experimentation would be necessary without their precise specification. Finally, it noted that Etzel requires operation at low temperatures and that this is not disclosed by Snitzer.

Accordingly, the board held that Snitzer's disclosure did not describe the terminal portion of the counts and that it was not an enabling disclosure.

OPINION

The substantive issues are whether appellant's disclosure would have enabled one skilled in the art to practice the invention of the counts and whether it describes the terminal portion of the counts. Before reaching these issues, however, we must first determine which party has the burden of proof, a question on which the parties disagree.

Burden of Proof

Appellant contends that the burden of proof on the enablement issue is on Etzel, as the junior party, whose motion to dissolve on this issue was denied. We cannot agree. Appellant, as the party copying claims from a patent for the purpose of instituting interference proceedings, must show by clear and convincing evidence that his disclosure supports the counts. Tummers v. Kleimack, 455 F.2d 566, 59 CCPA 846, 172 USPQ 592 (1972); Gubelmann v. Gang, 408 F.2d 758, 56 CCPA 1013, 161 USPQ 216 (1969); Dreyfus v. Sternau, 357 F.2d 411, 53 CCPA 1050, 149 USPQ 63 (1966); Crome v. Morrogh, 239 F.2d 390, 44 CCPA 704, 112 USPQ 49 (1956).

The denial of appellees' motion to dissolve did not shift the burden. As this court stated in Tummers v. Kleimack, supra, 455 F.2d at 569, 59 CCPA at 850, 172 USPQ at 594:

We find absolutely no merit to appellant's contention that the examiner's decision denying appellees' motion to dissolve switched the burden to appellees. The examiner's decision merely left the issue for the board to resolve after testimony was taken.

Although in the instant case no testimony was taken after the motion to dissolve was denied, the "examiner's decision merely left the issue for the board to resolve."

Appellant has cited a number of cases in his brief and at the oral hearing for the proposition that Etzel has the burden of proof on the enablement issue. However, none of these cases is helpful to appellant. In Field v. Knowles, 183 F.2d 593, 37 CCPA 1211, 86 USPQ 373 (1950), the issue was inoperability — not enablement — of the disclosure of the application placed in interference. This court stated that the disclosure is presumed to be operable. Although the court said that the junior party had the burden of proof by a preponderance of the evidence on this issue, it should be noted that it was the junior party, Field, who raised the issue. In Nicolaou v. Cooperman, 438 F.2d 993, 996, 58 CCPA 938, 941, 168 USPQ 717, 719 (1971), this court clearly indicated that the burden of proof on the issue of operability rests on the party raising it, whether he is the junior or senior party. Similarly, the party "raising" the interference by copying claims has the burden of proof on enablement. In Coast v. Dubbs, 88 F.2d 734, 737, 24 CCPA 1023, 1028, 33 USPQ 91, 94 (1937), this court considered the question of "the burden of proof relative to inherency, and inoperativeness as it bears upon inherency." However, the court's discussion of the burden of proof on inherency was dictum, since it found that Dubbs, senior party and copier, had established a prima facie showing of inherency:

Under all the facts of this case, we think a prima facie showing of inherency was made in the application of Dubbs, and that it was, therefore, incumbent upon Coast as the junior party to show lack of inherency . . .. Id. 88 F.2d at 738, 24 CCPA at 1030, 33 USPQ at 96.

The burden of proof (by clear and convincing evidence) on the description issue also lies with appellant, as the party copying claims from a patent. At oral hearing, ap...