Coleman v. Dines, 84-1121

Citation224 USPQ 857,754 F.2d 353
Decision Date08 February 1985
Docket NumberNo. 84-1121,No. 100,492,84-1121,100,492
PartiesJohn H. COLEMAN, Appellant, v. Martin B. DINES, et al., Appellees. Appeal Interference Federal Circuit
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Michael G. Berkman, Kegan, Kegan & Berkman, Chicago, Ill., for appellants.

Martha P. Mandel, Evanston, Ill., of counsel.

Richard R. Trexler, Trexler, Bushnell & Wolters, Ltd., Chicago, Ill., of counsel.

Arnold H. Krumholz, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, N.J., for appellees.

Before DAVIS, BALDWIN and KASHIWA, Circuit Judges.

DAVIS, Circuit Judge.

This appeal is from the judgment of the Patent and Trademark Office (PTO) Board of Patent Interferences (Board), Interference No. 100,492, awarding priority of the count to the junior party Dines, and others (Dines). We affirm.

I. The Interference

The subject matter of the interference is directed to a method of separating isotopes of an element. Prior to the current applications, those skilled in the art had tried to take advantage of the fact that the absorption spectra of atoms of an element exhibit an isotopic shift, and that it should be possible to excite isotopes of those elements with light of a selected wavelength. However, production of these light sources was not economically feasible, the atoms were not attainable in the vapor phase, and the shift exhibited overlapping bands. In addition, excitation was difficult, if not impossible, without the required volatility and vibrational characteristics existing in a compound. The current applications relate to a volatile uranyl compound which is useful in such a separation process, seemingly overcomes these obstacles, and meets the desired parameters.

As the Board pointed out, it is the selection and discovery of compounds having the necessary combination of volatility and vibrational sensitivities which is the "essence of the invention." The sole count (Count 1) (suggested by the examiner) defines the subject matter of the invention, and was inserted as each party's claim 1. It reads:

A process for the separation of isotopes of an element, said process comprising vaporizing a volatile uranyl compound, said compound having isotopically shifted infrared absorption spectrum associated with said element, and irradiating said volatile uranyl compound with infrared radiation which is preferentially absorbed by a molecular vibration of molecules of said volatile uranyl compound containing a predetermined isotope of said element so as to provide excited molecules of said compound enriched in said molecules of said compound containing said predetermined isotope, enabling separation of said excited molecules.

This interference was initially declared between the joint application of Coleman and Marks, Serial No. 906,615 ('615), and the Dines application, Serial No. 865,963 ('963). Coleman and Marks were accorded the benefit of a constructive reduction to practice on March 22, 1976 (the filing date of an earlier joint application, Serial No. 668,829 ('829), which issued as Patent No. 4,097,384). Dines (including a number of coinventors) was given the benefit of a constructive reduction to practice on June 17, 1976 (the filing date of an earlier grandparent application). Accordingly, Coleman and Marks were afforded senior party status, and Dines junior party status.

In a motion under 37 C.F.R. Sec. 1.231, Coleman and Marks moved to substitute the sole application of Coleman, Serial No. 219,362 ('362) (filed on December 22, 1980 as a divisional of the '615 application) for the '615 joint application. 1 This motion was granted and the interference redeclared. Coleman was then accorded the benefit of the '829 application, and therefore is the senior party in the present interference based on an effective filing date of March 22, 1976.

II. The Parties' Alleged Conception Dates

Coleman's conception allegedly dates back to the early 1970's. On December 11, 1973 a colleague of Coleman wrote to the Chairman of W.R. Grace & Co. about Coleman's work with high powered CO2 lasers. On December 18, 1973 Coleman himself wrote to Mr. Fred Kovac of Goodyear Tire & Rubber Co., referring to the use of lasers in uranium isotope separation.

In 1975, Coleman contacted Tobin J. Marks, Professor of Chemistry at Northwestern University. The result was a joint endeavor and a detailed proposal presented to the Energy Research and Development Administration (ERDA) of the federal government on June 25, 1975. Appellant Coleman concedes in his brief that the "material in this memorandum was developed and formalized by Marks, and by Coleman, and by Eric Weitz (Professor of Chemistry at Northwestern University and an associate of Marks')." 2 The ERDA proposal disclosed specific chemical classes and particular compounds for use in laser isotope separation. Volatility and vibrational characteristics were cited as the most important properties of these compounds.

The activities of Dines, together with his coinventors, can be traced back to 1975. Kramer, one of the coinventors, testified before the Board that in March 1975, he and Dines discussed isotope separation with Pete Lucchesi of Exxon Corporation. Lucchesi asked Kramer to conduct a study of the possibilities of obtaining uranium compounds for use with a CO2 laser in isotope separation. The result was a document dated May 22, 1975, entitled "VOLATILE URANIUM COMPOUNDS FOR LASER ISOTOPE SEPARATIONS," which summarized Kramer's and Dines' thoughts on how to make suitable compounds. Kramer stated that they subsequently attempted to obtain financing, until August 1975 when Lucchesi decided to support the program in-house. They then began a formal search for uranium compounds. These efforts continued through November 1975 when newcomer Richard Hall, one of the coinventors, began research into the relationship between the chemical compositions of these compounds and their volatility. In a December 1975 memo, the uranium compound UO2 (hfacac)2 . tetrahydrofuran was determined to have the properties necessary for use with a CO2 laser in isotope separation.

III. The Board's Findings

The Board decided that Coleman failed to present sufficient facts to establish that there was an "error" cognizable under 35 U.S.C. Sec. 116 3 in the original designation of joint inventorship in the '615 application (Coleman and Marks). The Board said that that lack of "error" was further supported by an overlap of subject matter which existed between Coleman's copending applications, and thus it was improper to assert different inventorship (Coleman and Marks for the '615 application, and Coleman for the '362 application) for indivisible subject matter. The result was that Coleman was held not entitled to the earlier filing date accorded the joint application because he could not adequately prove he was the "same inventor" under 35 U.S.C. Sec. 120 (see Part IV, infra ). Since Coleman was not entitled to the benefit of the joint application, he was limited to the filing date of the '362 divisional (December 22, 1980) for a constructive reduction to practice.

The Board went on to find that Coleman did not prove conception in the 1973 letters: there was no reason to conclude in looking at these letters that a CO 2 laser or the use of volatile uranyl compounds was ever intended. The Board did find that the 1975 ERDA proposal disclosed the invention in issue. However, testimony failed to establish that Coleman himself suggested using volatile uranyl compounds with a CO2 laser at that time, and therefore the ERDA proposal did not establish Coleman's own conception. Dines, on the other hand, proved conception (according to the Board) prior to March 22, 1976 (Coleman's earliest possible filing date) and diligence until their constructive reduction to practice on June 17, 1976 (Dines' filing date). Since Hall, one of the coinventors, had not arrived to begin his work until November 1975, the Board noted that Dines' earliest possible conception was in their December 1975 memo.

IV. Coleman's Alleged Benefit of an Earlier Filing Date

In considering the correctness of the Board's decision, we note that any underlying facts found by the Board must be reviewed under the clearly erroneous standard. In re Anderson, 743 F.2d 1578, 1580, 223 USPQ 378, 380 (Fed.Cir.1984). See also Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1578, 222 USPQ 665, 666 (Fed.Cir.1984). Here, the Board found that Coleman had "not presented facts sufficient to show that there was an error in inventorship with respect to the pertinent subject matter disclosed in the joint application." Accordingly, Coleman was held not entitled to the benefit of the earlier filed joint application under 35 U.S.C. Sec. 120. At the time, this section provided:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. [Emphasis added]. 4

The Board properly pointed out that the "same inventor" under this section includes an inventorship entity which has been corrected in accordance with the third paragraph of 35 U.S.C. Sec. 116, which provided as follows at the time of Coleman and Marks' conversion of that joint application to an application by Coleman alone:

Whenever a person is joined in an application for patent as joint inventor through error, or a joint inventor is not included in an application through error and such error...

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