Application of Spiller
| Decision Date | 14 November 1974 |
| Docket Number | Patent Appeal No. 9174. |
| Citation | 500 F.2d 1170 |
| Parties | Application of Lester L. SPILLER. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Arnold G. Gulko, Arlington, Va., Dressler, Goldsmith, Clement & Gordon, Ltd., Chicago, Ill., attorney of record, for appellant; David H. Badger, Ransburg Corporation, Indianapolis, Ind., of counsel.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 1-7 and 9-31 under 35 U.S.C. § 103, the rejection of claims 30-31 under 35 U.S.C. § 102, and the rejection under 35 U.S.C. § 112 of claims 1-2, 4-7, 9-11, and 19-23, of application serial No. 607,418, filed January 5, 1967, for "Manufacture of Paper and Similar Cellulosic Materials of Modified Surface Property by Electrostatic Application of Dry Powdered Starch to the Water-Wet Web Being Processed." We reverse in part and affirm in part.
The invention relates to the manufacture of cellulosic sheet material such as paper which is coated with starch to improve its surface properties. Uniform coating of the paper is accomplished by electrically grounding the wet paper and electrostatically charging dry starch particles which are suspended in the atmosphere surrounding a water-wet web of paper, perhaps while the paper is still within a paper-making machine and on a Fourdrinier wire. This charge prevents the starch particles from contacting one another in the damp atmosphere near the wet web, and the electrostatic forces cause the starch to penetrate the air stream associated with the moving wet web and to gently attach themselves to the surface of the wet web.
The claims are numerous. The majority are directed to methods of manufacture of paper; claims 26-29 are allegedly directed to the resulting sheet of paper, 28 and 29 being specific to newsprint. Claims 30 and 31 are directed to the improvement in a conventional paper-making machine which comprises means for the electrostatic deposition of charged starch particles therein. Representative are claims 1, 26, 30, and 31.
The references are:
Uong 2,030,483 Feb. 11, 1936
Read et al. (Read) 3,210,240 Oct. 5, 1965
Lichtenberger et al. 3,461,032 Aug. 12, 1969
(Lichtenberger)
(Effective filing date Nov. 24, 1965)
Smith et al. (Canadian) 704,036 Feb. 16, 1965
(Smith)
Casey, Pulp and Paper, 2nd Ed., N. Y. Interscience
1960, page 951
Reif, "An Electrostatic Process for Applying Dry
Coatings on Paper," TAPPI, October 1955, Volume
38, No. 10, pages 607-609
The board having affirmed the rejection of claims and groups of claims on three different statutory bases, 35 U.S.C. §§ 102, 103, and 112, we shall deal with them individually.
A principal issue is whether appellant's affidavit showing under Rule 131 is sufficient to remove Lichtenberger as a reference. Appellant admitted explicitly at oral argument, and implicitly in his briefs here and before the board, that the various rejections under § 102 and § 103 which use Lichtenberger alone or in combination with other references were proper, and it was therefore essential to overcoming them that he remove Lichtenberger as a reference. Such rejections are applicable against all claims.
Lichtenberger is used as a reference in various ways. First, as against apparatus claims 30 and 31, which describe an improvement in a paper-making machine, Lichtenberger is applied alone under § 102, allegedly identically disclosing the invention. Secondly, Lichtenberger is applied alone under § 103 to claims 1, 2, 5, 9, 10, 11, and 19-23. Finally, all the other claims are rejected under § 103 in view of various combinations of Lichtenberger and other references, Lichtenberger and Smith to render obvious the invention of claims 3, 12, 13, 15-18, and 24-28, and additionally with Casey as to claims 4, 6, 7, 14, and 29. We have noted the various claims and the ways in which they were rejected on Lichtenberger alone, or in combination with other references, because of the differences which appear in this regard between this case and the prior Rule 131 cases in this court upon which the decision in this case is to rest.
The inventor Spiller's affidavit and evidentiary material submitted therewith, including laboratory notebook pages and accompanying affidavit of Spiller's associate, Stephen J. Smith, establish that Spiller and his associate performed certain acts which, in his view, establish a reduction to practice of the claimed invention prior to the earliest effective filing date of Lichtenberger, November 24, 1965. Grounded wet TAPPI1 blotting paper was moved over a fluid bed of powdered starch electrostatically charged to a level of 20-40 kilovolts. The starch was electrostatically propelled into contact with and adherently deposited on the surface of the wet paper, which had been pretreated with a solution of potassium iodide and iodine to color the deposited starch particles so that they could be seen and the uniformity of the deposit thus observed. The paper sheet was oven dried and weighed prior to deposit of the starch and the wet paper with the starch deposit thereon was dried after the deposition to gelatinize the wet starch on the wet paper and redry the paper for subsequent weighing to determine the amount of starch deposited on the paper. The Smith notebook pages establish the various weight amounts of starch deposited on the paper at various voltages of electrostatic charge. Smith noted, "Works very well & can put as much on as we want." And also, "The higher the voltage the better the coverage."
Also in evidence is a short letter to appellant from L. S. Simser of August 12, 1965, who represented Penick & Ford Limited, of Cedar Rapids, Iowa, the company which supplied the starch and TAPPI blotting paper to appellant, and a portion of a letter from appellant's patent counsel, A. G. Gulko, dated October 14, 1965, which discusses appellant's invention. The latter apparently reported the results of a prior art search made on the invention (report not of record) and states Mr. Gulko's view of the invention as follows:
As I understand the present development, finely divided soluble starch powder is deposited by means of electrostatic forces from a fluid bed onto the surface of wet paper. The fluid bed underlies the wet paper as it goes through the paper-making process where the wet paper contains between about 40% to 70% by weight of water.
Spiller's affidavit refers to the Gulko letter as helping to record the details of the "demonstration" relied upon for a reduction to practice. While various other facts shown by the affidavits or the Smith notebook pages will be discussed later, we will start from the proposition that appellant's affidavits and evidence establish electrostatic coating of dry starch particles on re-wet TAPPI blotting paper.
The opinion of the board and the Examiner's Answer, with which the board agreed, list and discuss various elements of the thirty claims which are believed not to have been established by the affidavit showing. The examiner stated, in pertinent part (emphasis ours):
The affidavits and exhibits do not show the amounts of claims 3, 12-18 and 24-29, nor the water contents of claims 1-25. There is no showing of any apparatus remotely like that of claims 30 and 31. There has been no allegation or showing that the starch was applied to a web containing at least 25% moisture. The affidavits and exhibits do not show a process or apparatus such as that claimed. Thus the affidavit fails to prove the heart of the claimed invention, ie, application of particles to a wet web. The affidavits do not prove that the process was done in conjunction with a papermaking machine nor that the apparatus was part of a papermaking machine.
The board added the following criticism of its own:
There is no clear evidence of record that Appellant's...
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