Alpert v. Slatin

• Decision Date: 25 July 1962
• Docket Number: Patent Appeal No. 6766.
• Citation: 305 F.2d 891,134 USPQ 296
• Parties: Marshall B. ALPERT, Appellant, v. Harvey L. SLATIN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

134 USPQ 296, 305 F.2d 891 (1962)

Marshall B. ALPERT, Appellant, v. Harvey L. SLATIN, Appellee.

Patent Appeal No. 6766.

United States Court of Customs and Patent Appeals.

July 25, 1962.

Bartholomew A. Diggins, Donald R. Dunner, Robert E. LeBlanc, Diggins & LeBlanc, Washington, D. C. (John B. Henrich, Jr., New York City, of counsel), for appellant.

Norman N. Holland, New York City (George C. Bower, Wilmington, Del., and William T. Estabrook, Washington, D. C., of counsel), for appellee.

Before WORLEY, Chief Judge, MARTIN and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

Despite the voluminous record and briefs which we have been here required to consider, the single comparatively simple issue on this appeal is that of priority of invention of a process for producing titanium metal which is defined in the single count as follows:

"2. The process of producing titanium metal in solid form comprising, dissolving a material of the group consisting of titanium dichloride and titanium trichloride as a solute in a solvent molten bath composed of materials of the group consisting of alkali metal chlorides and alkaline-earth chlorides and mixtures thereof, and electrolyzing said bath containing said solute in a cell containing a solid cathode, thereby depositing titanium metal in crystalline aggregates on said cathode."

The Board of Patent Interferences after a thorough consideration of the extensive record, and what appears to have been a careful and judicious consideration of the adversary contentions, awarded priority to the senior party, Slatin.¹ The junior party Alpert² has appealed this decision.

We agree with the Board of Patent Interferences that the decision on the priority issue is essentially a factual determination as to which the junior party Alpert has the burden of proof. For the reasons hereinafter stated, we agree with the Board that Alpert did not sustain the burden of proof required of a junior party so that on the present record the senior party Slatin is entitled to the award of priority.

The history of the present interference is both lengthy and complex. Insofar as this history has significance here, the count in issue originated as allowed claim 21 in the Slatin application and was substituted in the interference when the examiner granted Alpert's motion to amend by adding it after finding the original count to be unpatentable. No question is present here as to the right of either party to make this count.³

The party Slatin as the senior party is entitled to prevail unless the junior party Alpert establishes his right to priority by a preponderance of the evidence. Levy v. Gould, 87 F.2d 524, 24 CCPA 910; and Archer v. Papa, 265 F.2d 954, 46 CCPA 835.

It is axiomatic that if the junior party is to prevail, the right to do so must be established by proofs which show priority of the precise invention defined by the count. In thus testing Alpert's case we are influenced, as was the board, by Alpert's interpretation of the count in his brief before the board. As stated by the board:

"In Alpert\'s brief it is stated that there are four specific limitations in the count, a matter evident from inspection of the count, but in particular Alpert develops what is meant by `depositing titanium metal in crystalline aggregates on said cathode\' and the chloride limitation.

"As to the latter limitation it is pointed out that originally the interference was instituted on a count suggested by the examiner that was broader in that it was permissive of halide substituent other than chloride. Such count in the motion period was held unpatentable over the prior art and the present count, which was and is claim 21 of the Slatin application, was substituted in that it distinguished from the prior art in being restricted exclusively to chlorides.

"As to the former limitation `depositing titanium metal in crystalline aggregates on said cathode\' Alpert correctly points out that the history of the limitation in Slatin\'s application shows that it means what it states; it does not mean lower oxides containing a certain amount of titanium and not titanium deposits in granulated or powdery form (pp. 3, 4, 5 Alpert brief). To these comments it should be added that `depositing — on the cathode\' means precisely that and not in the vicinity of the cathode."

Thus to meet the count, the evidence on behalf of Alpert must establish his right to a date of invention prior to August 10, 1949, Slatin's filing date, upon his invention of a process in which titanium metal was deposited in crystalline aggregates on the cathode of an electrolytic cell from an electrolyte which consists of titanium dichloride or titanium trichloride dissolved in a solvent molten bath compound of materials of the group consisting of alkaline metal chlorides and alkaline-earth chlorides and mixtures thereof.

To establish his case Alpert offered the testimony of seven witnesses, including Alpert, and Schultz and Sullivan, who were originally named as co-inventors, and submitted a number of documentary exhibits.

Alpert asserts that this evidence established conception of the invention of the count on or about December 1, 1948, relying largely on the proofs of a suggestion submitted by him to Messrs. Sullivan and Jacobsen on December 15, 1948 and introduced in evidence as Exhibit 4.⁴ That exhibit is described by the board as suggesting "adoption of a program of exploration of the possibility of depositing titanium by some electrolytic procedure from a titanium salt of lower valence than quadrivalent."

After a careful review of this evidence we agree with the board's opinion that:

"* * * The suggestion, Alpert Exh. 4, was based largely on theoretical considerations, thermo-dynamic in nature, with recommendation that deposition from solutions, aqueous or organic, or from fused salts be tried. * * *

"* * * Conception of an inventive process involves proof of mental possession of the steps of an operative process and, if necessary, of means to carry it out to such a degree that nothing remains but routine skill for effectuation thereof. If after the claimed conception date extensive research was found necessary before achieving minimum satisfactory performance obviously the mental embodiment of that date was a mere hope or expectation, a statement of a problem, but not an inventive conception. Alpert Exh. 4 was followed by extensive research characterized by perplexing intricate difficulties arising every step of the way and accordingly Alpert Exh. 4 is held not to constitute evidence of conception of the invention of the count.

"In fact in view of the nature of the ensuing research this is considered to be one of those unusual cases where the work of conception must be considered to proceed simultaneously with the work of reduction to practice. This doctrine enunciated by Robinson (Robinson on Patents, Vol. 1, Sec. 381, p. 538) is but rarely applied (Smith v. Bousquet, 27 CCPA 1136, 519 O.G. 800, 1940 C.D. 474, 111 F.2d 157) to a residuum of cases where results at each step do not follow as anticipated, but are achieved empirically by what amounts to trial and error. In this type of research the inventor\'s mind cannot formulate a completed invention until he finally performs a successful experiment. In Alpert\'s case the contents of the contemporaneous reports, not the confident assertions of the testimony, dictate the application of the doctrine and significantly, they, down to the time of the last report in evidence, August 15, 1949, leave the matter of consummation of a successful experiment in a state of uncertainty."

Alpert's evidence shows that National Lead Company adopted the program proposed in the December 1948 suggestion (Exhibit 4) and that Alpert and Schultz worked on the program, making reports on their progress to their supervisor, Sullivan. Those reports were also transmitted to Sullivan's immediate supervisor, Jacobsen, and Jacobsen's immediate supervisor, Alessandroni.

From these reports and the testimony Alpert established that four specific runs in a series directed to the production of titanium metal by electrolysis were made prior to August 10, 1949. These runs are relied on by Alpert as constituting actual reduction to practice of the invention defined in the count prior to Slatin's filing date. The dates of these runs are March 25, 1949; about May 23, 1949; the week of June 13, 1949; and the week preceding July 18, 1949.

The first alleged reduction to practice is the fourth run in the series, made on March 25, 1949 and reported in Alpert Exhibit 11. Concerning the product of that run, Schultz testified:

"* * * When we concluded this run, we permitted the cell to cool down. In other words, we were concerned about oxidation of metallic titanium particularly at these temperatures, so we closed the cell, as you see, with the transite top, and we had some inert gas going into it. * * * We permitted this entire business to cool down at room temperature, solidify in position. Then we broke it out. We found that the material, the titanium metal was in the electrolyte immediately around the cathode and still something seemed to be adhering to the cathode. We sent both fractions down for analysis." Emphasis added.

Examination of the two fractions by x-ray diffraction was made by the witness North. His report on the fraction adhering to the cathode was as follows:

"X-ray Pattern — Not a match with known titanium lines. Two lines may be

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