Bierly v. Happoldt

• Decision Date: 06 February 1953
• Docket Number: Patent Appeal No. 5921.
• Citation: 201 F.2d 955,40 CCPA 774
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: BIERLY v. HAPPOLDT.

40 CCPA 774, 201 F.2d 955 (1953)

BIERLY v. HAPPOLDT.

Patent Appeal No. 5921.

United States Court of Customs and Patent Appeals.

February 6, 1953.

Campbell, Brumbaugh, Free & Graves, New York City (Walter H. Free, New York City, Thornton F. Holder, Painesville, Ohio and John R. Janes, New York City, of counsel), for appellant.

J. M. Castle, Jr., Wilmington, Del., for appellee.

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Judges.

GARRETT, Chief Judge.

This is an appeal from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority to appellee because of its holding that the disclosure in the application of appellant, who is the senior party, does not clearly support the counts.

The application of Bierly, serial No. 21,742, entitled "Flame-Resistant Composition," was filed April 17, 1948; that of Happoldt, serial No. 61,899, entitled "Flame Retardant Compositions," was filed November 24, 1948.

A patent, No. 2,480,298, was issued upon the Happoldt application August 30, 1949. It contained five claims. In due time claim 1 was copied into the Bierly application and an interference was declared October 31, 1949.

Subsequent proceedings before the Primary Examiner are epitomized in the decision of the Board of Interference Examiners as follows:

"* * * Bierly in the motion period moved to add proposed counts 2, 3 and 4 corresponding to claims 2, 3, and 4 of the Happoldt patent. Happoldt opposed this motion and also moved to dissolve on the ground that Bierly had no right to make the count. The Primary Examiner initially granted the motion to dissolve and denied the motion to add proposed counts but on reconsideration, in view of the citation of certain patents, publications and pertinent law and the filing of affidavits in behalf of the party Bierly, denied the motion to dissolve, and added the proposed counts."

Count 1 of the interference, which is illustrative, reads:

"1. A composition of matter comprising at least 50 per cent by weight of solid polythene, 20 per cent to 35 per cent by weight of antimony trioxide and at least 6 per cent by weight of a solid chlorinated hydrocarbon, the said chlorinated hydrocarbon containing from 55 per cent to 80 per cent by weight of chlorine; the combined weight of antimony trioxide and the said solid chlorinated hydrocarbon being present in an amount of between 38 per cent to 50 per cent by weight based on the combined weight of polythene, antimony trioxide and chlorinated hydrocarbon present in said composition and said proportions of polythene, antimony trioxide and chlorinated hydrocarbon being based on the combined weight of polythene, antimony trioxide and chlorinated hydrocarbon present in said composition." (Italics ours).

For reasons hereinafter appearing we quote claim 2 as it originally appeared in the Happoldt application:

"2. A composition as claimed in Claim 1, wherein the inflammable polymeric thermoplastic material comprises at least 50% of the composition".¹

We have italicized the clause in claim 1, the subject matter of which constitutes the only issue before us.

There was another issue before the board, it being whether the party Bierly's specification disclosed the elements of antimony trioxide, one of the three basic elements in the claims. Only antimony oxide was named in the specification. The Primary Examiner at first ruled that antimony trioxide was not disclosed, but upon reconsideration held, upon the showing made, that Bierly "has established that before and at the time of filing of the Bierly application, antimony oxide, in the absence of any other limitations as to the oxygen, was generally understood by those skilled in the art to mean antimony trioxide."

The board approved the latter ruling and no appeal has been taken from its holding in that respect.

As to disclosure of the limitation which we have italicized in the count as quoted supra, the Primary Examiner held the subject matter of it to be disclosed in the Bierly specification, and with that the board disagreed. The appeal relates to that single phase of the controversy.

The board, referring to the question of disclosure broadly, said: "There is but one question for disposition * * * but it has become rather involved." This seems to us to be something of an understatement even when limited to the single factor which we are called upon to consider. The involvement is possibly due in part to the technical character of the ingredients which enter into the composition of matter defined in the counts, but we think it is more particularly due to the somewhat complicated method used in defining the proportions of such ingredients. For convenience we repeat the limitation in the count which constitutes the issue:

"* * * the combined weight of antimony trioxide and the said solid chlorinated hydrocarbon being present in an amount of between 38 per cent to 50 per cent by weight based on the combined weight of polythene, antimony and chlorinated hydrocarbon present in said composition * * *."

In the brief for appellee there is a concise analysis of the limitation, which we reproduce, the italics being quoted:

"* * * These proportions are all expressly based on the combined weight of the three components, any optional components being disregarded. The proportions called for are:

"Polythene — at least 50 per cent by weight;

Antimony trioxide — 20 per cent to 35 per cent by weight;

Solid chlorinated hydrocarbon — at least 6 per cent by weight;

Combined weight of antimony trioxide and solid chlorinated hydrocarbon — 38 per cent to 50 per cent by weight."

The brief continues:

"The issue turns on whether Bierly disclosed the use of antimony trioxide within the range of 20% to 35% by weight and the use of a combined weight of antimony trioxide and solid chlorinated hydrocarbon, based, of course, on the combined weight of all three specified components of the composition, within the range of 38% to 50%. It is Happoldt\'s position as well as that in the Board\'s decision that Bierly fails to disclose clearly either the use of as much as 20% of antimony trioxide or as much as 38% combined weight of antimony trioxide and solid chlorinated hydrocarbon." (Italics quoted.)

As a condition precedent to obtaining a patent, it is provided by 35 U.S.C. § 33, (now § 112) R.S. 4888, that there shall be filed in the Patent Office "a written description of the claimed invention and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same * * *." (Italics ours.)

In the instant case, appellant Bierly seeks a finding of priority as to the several counts which already have been patented to the party Happoldt, Jr. (inadvertently, if the interference was properly declared, since Bierly's application was copending with that of Happoldt, Jr.) to the end that he also may receive a patent upon them.

The counts define a composition of matter such as the compositions rendered patentable by 35 U.S.C. § 31, (now § 101) R.S. 4886. It was incumbent upon Bierly therefore to so describe his claimed invention in his specification as to enable any person skilled in the art to make or compound such composition of matter.

More accurately, since Bierly's specification was prepared and filed in the Patent Office more than seven months before the Happoldt application was filed and more than fifteen months prior to the issuance of the Happoldt patent from which Bierly obtained his information of the counts, it must be found that he had anticipated the counts with a description in "full, clear, concise and exact terms."

It is well settled, of course, that one who...