Anderson v. Natta

• Decision Date: 11 October 1973
• Docket Number: Patent Appeal No. 8818-8820.
• Citation: 178 USPQ 458,480 F.2d 1392
• Parties: Arthur W. ANDERSON and Gelu S. Stamatoff, Appellants, v. Giulio NATTA et al., Appellees, v. Karl ZIEGLER et al., Appellees. Giulio NATTA et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Karl ZIEGLER et al., Appellees. Karl ZIEGLER et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Giulio NATTA et al., Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

178 USPQ 458, 480 F.2d 1392 (1973)

Arthur W. ANDERSON and Gelu S. Stamatoff, Appellants, v. Giulio NATTA et al., Appellees, v. Karl ZIEGLER et al., Appellees.

Giulio NATTA et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Karl ZIEGLER et al., Appellees.

Karl ZIEGLER et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Giulio NATTA et al., Appellees.

Patent Appeal Nos. 8818-8820.

United States Court of Customs and Patent Appeals.

July 19, 1973.

Rehearing Denied October 11, 1973.

Roger A. Hines, Wilmington, Del., attorney of record for Anderson and Stamatoff. James T. Corle, Wilmington, Del., Gerald A. Hapka, Washington, D.C., A. Newton Huff, Wilmington, Del., of counsel.

Morgan Finnegan Durham & Pine, New York City, attorneys of record for Natta, Pino & Mazzanti. George B. Finnegan, Jr., Ralph M. Watson, David H. Pfeffer, New York City, of counsel.

Arnold Sprung, New York City, attorney of record for Ziegler, Martin, Breil and Holzkamp. Nathaniel D. Kramer, Frank Murphy, New York City, of counsel.

Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.

LANE, Judge.

These appeals are from the decision of the Board of Patent Interferences, adhered to on reconsideration, awarding priority of invention of the sole count in issue to none of the three parties involved. This three-party interference was declared on January 12, 1965. Each party took testimony and submitted exhibits. Indeed, the transcript of record before this court consumes almost 4400 pages spanning five volumes. We have considered that record, which includes the decisions of the board, and the arguments advanced by each of the parties, and for reasons set forth herein, we reverse the board's decision and hold that priority of invention should have been awarded to the party Natta et al. (Natta).

THE APPEALS

Appeal No. 8818 is the appeal of the party Anderson et al. (Anderson) involved on application Serial No. 632,416 filed January 4, 1957, as a continuation-in-part of application Serial No. 568,707 filed March 1, 1956. Anderson was accorded the benefit of the latter filing date, but alleged earlier dates of conception and actual reductions to practice. The board held the alleged dates not to be proved and restricted Anderson to the March 1, 1956, filing date for date of invention.

Appeal No. 8819 is the appeal of Natta involved on application Serial No. 710,840 filed January 24, 1958, as a division of application Serial No. 514,097 filed June 8, 1955. Natta was restricted to the June 8, 1955, filing date for date of invention.

Appeal No. 8820 is the appeal of the party Ziegler et al. (Ziegler) involved on application Serial No. 514,068 (hereafter the Ziegler U.S. application) filed June 8, 1955. Ziegler claimed the benefit of the August 3, 1954, filing date of a West German priority application (hereafter the Ziegler German application) under 35 U.S.C. § 119, but the board held that the German application is insufficient in its disclosure of how to use the subject matter of the count and accordingly restricted Ziegler to the June 8, 1955, filing date for date of invention.

Having determined that Anderson had proved no date earlier than March 1, 1956, and that both Natta and Ziegler were entitled to the same date of June 8, 1955, the board in effect held that there was no first inventor of the subject matter of the count and made no award of priority. In the words of the board, priority was "awarded against" each party.

THE SUBJECT MATTER

The count of this interference reads as follows:

A process which comprises interpolymerizing ethylene with another hydrocarbon having one terminal-CH = CH2 group and no other non-aromatic unsaturation, said other hydrocarbon having at least 4 carbon atoms per molecule, in the presence of a coordination catalyst, one component of which contains a Ti-Cl bond.

The copolymerization process defined in the count is catalyzed by a multi-component composition, termed a "coordination" catalyst, containing a transition element compound and a reducing compound. The transition element compound specified in the count must contain a Ti-Cl bond and may be titanium tetrachloride (TiCl4). The reducing component of the coordination catalyst may be a metal hydride or an organometallic compound such as a metal alkyl.

The products of the process of the count are ethylenealpha olefin copolymers. The olefin comonomer, which may be, for example, styrene, butene-1 or dodecene-1, imparts various properties to the ethylene component and renders the copolymer more suitable for a variety of uses than polyethylene. Depending on the comonomer and the process conditions, ethylene copolymers apparently suitable for extrusion into film or pipe or as wire coatings or for injection molding into diverse shaped articles can be produced.

THE CASE FOR ANDERSON

It is contended that in 1954 researchers working under Anderson and Stamatoff, as well in one instance as Stamatoff himself, prepared ethylene-olefin copolymers using a coordination catalyst in which one component had a Ti-Cl bond. The conception of such a catalyst and its use in olefin copolymerization is also asserted to have occurred in 1954.

Anderson principally relies on the work of Baxter, a research chemist under the supervision of Stamatoff, which is alleged to have constituted reduction to practice of the invention of the count. In May 1954, Baxter gave instructions for the reaction of styrene and ethylene in the presence of a titanium tetrachloride-phenyl magnesium bromide coordination catalyst. That reaction yielded a product which Baxter formed into a small, sample film for the purpose of infrared analysis. Anderson contends that the product was a copolymer and that it was recognized as such. Anderson also argues that the utility of the product was apparent from its ability to be fashioned into a film, which he asserts was self-supporting, tough and flexible, as well as from the known utility of polyethylene and other film-forming olefin polymers.

Anderson additionally refers to the work of researchers Schreyer, Stamatoff, Brehm, Rombach and Wheatcroft. Specific experiments by these individuals using coordination catalysts in the polymerization of olefins, which were conducted subsequent to Baxter's work in May 1954, are relied upon as separate reductions to practice. Anderson urges that the totality of the evidence makes out a convincing case of conception and actual reduction to practice on the part of Anderson prior to the June 1955 date accorded both Ziegler and Natta.

The board held that none of the experiments conducted on behalf of Anderson amounted to reduction to practice and that conception has not been proved. The recurrent deficiencies found by the board were (1) the failure to contemporaneously establish practical utility of the polymer products and (2) the failure to establish that there was contemporaneous appreciation or conviction of success with respect to the production of a copolymer or interpolymer, the intended product of the reactions and the product which results from interpolymerization as specified in the count.

Because we agree with the board's conclusions respecting the failure of the record to establish that the products of the runs relied upon by Anderson had practical utility, we do not consider the additional findings of the board concerning the production of a copolymer.

This court has held that for an invention to be completed, i. e., reduced to practice, utility must either be established or apparent. See, e.g., Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957). Where the invention is a process, the product of the process must have utility. See Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966). The mere production of copolymers is not necessarily a sufficient utility for a process, unless the usefulness is obvious from the copolymers themselves. See Fang v. Hankins, 399 F.2d 262, 55 CCPA 1468 (1968). Where, as here, the intended use of an invention is not indicated in the count in interference, evidence establishing substantial utility for any purpose is sufficient to show reduction to practice. Campbell v. Wettstein, 476 F.2d 642 (CCPA 1973). These are the legal considerations against which the facts involved in Anderson's case for reduction to practice must be measured.

We first observe that the only specific utility asserted by Anderson for any of the products of the runs alleged to constitute reduction to practice is as a film. Although Anderson makes some general allusions to utility in the same manner as polyethylenes known at the time of experimentation, no specific utility other than film is identified. Anderson calls attention to the internal reports which were introduced in evidence, and these documents do provide an overview of the situation in the laboratories of DuPont, Anderson's assignee, where the new coordination catalysts were being explored. It appears that at the time of the initial experimentation upon which Anderson relies in this interference, the emphasis was on proving the operability of the catalysts in polymerization. The hope seems to have been that homopolymerization and copolymerization of olefins might be more closely controlled than previously so as to be productive of polymers different from those theretofore achieved. There is only the most abstract reference to ultimate uses of polymer products probably because demonstration of the very practicality of the catalysts was the primary objective at that formative stage of investigation. Our perception of the nature of the experimentation is corroborated by the absence of any polymer product testing for specific uses. The only testing done at the critical time was in the nature of infrared analysis and density and viscosity measurement which were aimed at identifying the structure and molecular weight of the products of the polymerization runs using the...