Application of Frilette, Patent Appeal No. 8400.

• Decision Date: 14 January 1971
• Docket Number: Patent Appeal No. 8400.
• Parties: Application of Vincent J. FRILETTE and Paul B. Weisz.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

168 USPQ 368, 436 F.2d 496 (1971)

Application of Vincent J. FRILETTE and Paul B. Weisz.

Patent Appeal No. 8400.

United States Court of Customs and Patent Appeals.

January 14, 1971.

Richard K. Stevens, John F. Witherspoon, Stevens, Davis, Miller & Mosher, Arlington, Va., for appellant; O. G. Hayes, New York City, George A. Depaoli, Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and NEWMAN, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals insofar as it affirmed the rejection of claims 1, 2, 12, 13, 20-22 and 24 in appellants' application serial No. 559,061, filed June 21, 1966, for "Catalytic Conversion of Hydrocarbons." The application is a division of appellants' copending application serial No. 763,433, filed September 26, 1958.

The history of the parent application is essential in understanding the issues now before us. Appellants provoked an interference between their parent application and a patent to Kimberlin et al. by copying the following claims from the patent:

1. A process for upgrading hydrocarbons which comprises contacting a hydrocarbonaceous fluid in a conversion zone at elevated temperatures with a crystalline metallic aluminosilicate catalyst having uniform pore openings between about 6 and about 15 Angstrom units, said material being the sole conversion catalyst in said zone and recovering an upgraded hydrocarbon product having a molecular weight no higher than said first named hydrocarbonaceous fluid.

2. The process of claim 1 wherein said catalyst comprises a member of the alkaline earth group.

These became the two counts of the interference and reveal the nature of the invention there involved. Catalysts such as those recited in the claims are called molecular filters or sieves.

During the motion period appellants moved to substitute a count under Rule 231(a) (2), which provided:

(a) Within the period set in the notice of interference for filing motions any party to an interference may file a motion seeking:

* * * * * *

(2) To amend the issue by addition or substitution of new counts.

The proposed substitute count would have changed count 1, supra, solely by amending the lower limit of the pore size from "about 6" to "about 5" Angstrom units and the upper limit from "about 15" to "about 13" Angstrom units.¹ In support of their motion to substitute, appellants filed a brief stating that the proposed count was necessary to permit them to establish their best date of priority, and referring to the Commissioner's Notice of April 5, 1954 (681 O.G. 864). This notice stated that in some cases the disclosure in an application, "although for the same invention in fact as the patent claim, is somewhat broader than the claim of the patent." In such cases, the notice said, an applicant may be permitted to substitute a count wherein language based upon his slightly broader disclosure replaces the corresponding limitation in the patent claim, if he "makes a satisfactory showing, as by demonstrating that his best evidence lies outside the exact limit of the patent claim." In redeclaring an interference in such cases, "it should be indicated that the claim in the patent corresponds substantially to the substituted interference count."

The examiner denied the motion, for reasons which are entirely unclear. He first stated that the 6-15 Angstrom sieve was usable to treat a broad range of hydrocarbons, including straight and branched chain paraffins and olefins, acyclics and ring hydrocarbons, whereas the 5 Angstrom sieve was capable of treating only straight-chain paraffins and olefins. He concluded that the substitute count would somehow "limit" the Kimberlin claims "to the latter group of hydrocarbons and it is not within the jurisdiction of this Office to do so." He further concluded that "the utility of the 5 Angstrom sieve is to a separate invention," and that appellants would have an opportunity to establish their earliest dates in another interference then pending.

Whatever the soundness of the examiner's reasons for denying the motion to substitute, the important thing to note is that it was in fact denied, and the denial was unappealable (see Rule 244 (d)). It does not appear that appellants petitioned the Commissioner to reverse the examiner's ruling.

Appellants proceeded through the interference on the original counts set forth above. Kimberlin stood on his filing date. The board held that appellants had failed to prove that they had invented the subject matter of the counts earlier than Kimberlin's filing date, and awarded priority to Kimberlin. On appeal to this court, we affirmed. Frilette v. Kimberlin, 412 F.2d 1390, 56 CCPA 1242 (1969).

Appellants then filed the divisional application which is now before us. We find claim 1 to be suitable for developing the issues here:

A process for upgrading hydrocarbons which comprises contacting a hydrocarbonaceous fluid in a conversion zone at elevated temperatures with a crystalline metallic aluminosilicate having uniform pore openings between about 5 and about 13 Angstrom units, said material being the sole conversion catalyst in said zone, and recovering an upgraded hydrocarbon product having a molecular weight no higher than said first-named hydrocarbonaceous fluid.

It will be noted that this claim is the very one appellants sought to substitute for count 1 of the interference. It differs from count 1, set out supra, only in that the pore-size range is here recited as about 5-13 Angstroms, as against about 6-15 Angstroms in the count. The issues developed below revolved around the change in recitation of the pore-size range.

a. The Rejection on the Kimberlin Patent

The examiner rejected all the claims here on appeal "under 35 U.S.C. 103 as being unpatentable over Kimberlin et al." Appellants conceded the pertinence of the Kimberlin teaching, but sought to antedate Kimberlin by a Rule 131 affidavit. The board, in affirming the rejection, declined to consider the affidavit insofar as it pertained to pore sizes between 6 and 13 Angstroms. The board stated:

We will also keep in mind the circumstance that affidavit evidence directed to subject matter embraced by the counts in the aforementioned interference is not here available to appellants, since such evidence should have been presented during the interference proceedings. Thus, for appellants to prevail, we must find that their affidavit contains sufficient evidence to support the allowance of the claims here on appeal, apart from any evidence directed to the subject matter of the interfering counts. Emphasis ours.

This holding was erroneous.

The Kimberlin patent is being used under § 103 as a prior art reference of the type described in § 102 (e).² An applicant may remove such a reference, i. e., show that it is not "prior" art, by showing that he made the claimed invention before the patentee's filing date. In the present case, appellants rightly contend that they had no opportunity to do so in the interference proceeding, since the Patent Office would not permit a claim of the present scope to be substituted in the interference. Accordingly, the interference decision is of no relevance to the rejection on the Kimberlin patent, and the patent should be treated as any other patent used as a § 102(e) reference. Appellants' loss of priority in the interference was not based on their failure to show broad conception of subject matter within the overlapping range of 6-13 Angstroms, but on their failure to show reduction to practice or diligence as to the subject matter of count 1. See Frilette v. Kimberlin, supra, 412 F.2d at 1396, 56 CCPA at 1250. It is apparent that evidence of appellants' work with 5 Angstrom sieves, while not relevant with respect to the invention of the interference count, would be relevant evidence of reduction to practice or diligence with respect to the invention now claimed. We must therefore conclude that the fact that appellants suffered an adverse award of priority (a § 102(g) issue), as to an invention which the Patent Office determined was not "substantially the same" as that now claimed, is of no relevance in determining whether they made the invention now claimed before the Kimberlin filing date.

b. The Rejection on the Interference Counts

The board also affirmed the examiner's rejection of certain claims, including claim 1, as unpatentable over the interference counts, under § 103. The board said: "We find no patentable distinction between the claims and the counts." Appellants complain bitterly that in so holding the "Board of Appeals has, in effect, reconsidered the Examiner's decision on the motion and has reversed it." They further state:

In essence, what the Board of Appeals is doing is to say that the Examiner was wrong in denying the Motion to Substitute thereby precluding appellants from showing their best date but that this denial, although regrettable, is not binding on the Board of Appeals. Clearly, such a position runs afoul of common principles of equity and justice.

The solicitor counters this as follows:

There is a certain finality to such a

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