Case v. CPC Intern., Inc.

• Decision Date: 05 March 1984
• Docket Number: No. 83-964,83-964
• Citation: 730 F.2d 745,221 USPQ 196
• Parties: Leslie C. CASE, Appellant, v. CPC INTERNATIONAL, INC., and Commissioner of Patents and Trademarks, Co-Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 745

730 F.2d 745

221 U.S.P.Q. 196

Leslie C. CASE, Appellant, v. CPC INTERNATIONAL, INC., and Commissioner of Patents and Trademarks, Co-Appellees.

Appeal No. 83-964.

United States Court of Appeals, Federal Circuit.

March 5, 1984.

Leslie C. Case, pro se, submitted for appellant.

Joseph F. Nakamura, Sol., and Jere W. Sears, Deputy Sol., Arlington, Va., submitted for appellee, Comm'r of Patents and Trademarks.

Keith V. Rockey, Chicago, Ill., submitted for appellee, CPC Intern., Inc.; George L. Greenfield, Boston, Mass., Ellen P. Trevors, Englewood Cliffs, N.J., of counsel.

Before KASHIWA and NIES, Circuit Judges, and KELLAM, ^* Senior District Judge.

NIES, Circuit Judge.

This appeal is from the judgment of the United States District Court, District of Massachusetts, entered March 25, 1983, upholding the award of priority to CPC International, Inc., (CPC) in an interference proceeding in the United States Patent and Trademark Office (PTO).

The action was brought in the district court under 35 U.S.C. Sec. 146. Our jurisdiction is based on 28 U.S.C. Sec. 1295(a)(4)(C).

Appellant, Dr. Leslie C. Case, is the owner of U.S. Patent No. 3,510,471 and is the inventor named therein. Dr. Case asserts that an interference between his patent and CPC's application Serial No. 105,684 was improperly declared by the PTO and that the district court erroneously upheld the award of priority to CPC in that proceeding.

Dr. Case puts forth numerous substantive and procedural errors as grounds for reversal of the district court's decision. Having considered each of Case's arguments, we affirm. We also affirm the district court's dismissal of the Commissioner of Patents and Trademarks as a co-defendant.

Background

The inventions of the parties are directed to polyether polyols.

CPC is the owner of two patent applications relevant here, in both of which Hyman M. Molotsky is the named inventor. On January 3, 1967, the first Molotsky application, Serial No. 606,596, was filed claiming certain starch polyethers and processes for preparing them. The following description is to be found therein:

Starch is reacted, preferably ... with an alkylene oxide in an autoclave in the presence of an alkaline catalyst .... The reaction is carried out for a sufficient period of time so that the reaction products obtained are polyethers having an average M.S. of about 3.5 to about 50 or more (the term M.S. is used to denote the moles of alkylene oxide per anhydroglucose unit).

The application also taught that a reactive solvent, for example glycerin, could be used rather than an inert solvent. Example 6 described a polyether polyol prepared by reacting glycerin starch and propylene oxide.

In January of 1971, CPC filed a continuation-in-part application, Serial No. 105,684, containing all of the disclosure of the original, including Example 6, and new disclosure. This application became the application of the subject interference.

Dr. Case's patent was issued on an application filed on March 9, 1967, and is directed to polyether polyols. The polyether polyol claimed in the patent is a mixture produced by reacting a polyalcohol, such as glycerin, and a polysaccharide, such as starch, with an alkylene oxide. The Case patent teaches that the polyalcohols to be oxyalkylated are those aliphatic alcohols containing 3 to 9 carbon atoms and a minimum of 3 OH groups. The claims specify 10 to 95% of oxyalkylated polyalcohol by weight and 90 to 5% by weight of oxyalkylated polysaccharide. Starch is one of the polysaccharides. It is undisputed that the product of Example 6 in CPC's application falls within claim 1 of the Case patent.

In order to provoke an interference with Dr. Case's '471 patent, CPC copied the patent claims into the '684 application. This tactic proved unsuccessful. The examiner of the '684 application rejected the allowance of these claims to CPC under 35 U.S.C. Sec. 112, first paragraph, inasmuch as CPC's disclosure did not support these claims, in particular the weight limitations. The examiner went on to state:

However, since common subject matter is involved in the above patent and the instant application, applicant is advised to submit claims directed to a polyether polyol which is the reaction product of starch and the various disclosed derivatives thereof with glycerin and propylene oxide. See M.P.E.P. 1101.02(f); In re Ziegler, 150 U.S.P.Q. 551; Rule 205(a).

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Upon making the said claims, the interference will be instituted on the basis of the corresponding claims of the Case patent as the counts to which applicant's claims will correspond substantially.

After CPC cancelled the rejected claims and submitted other claims in accordance with the above, the subject interference was declared on the basis of "phantom" counts devised by the office to circumscribe what the examiner perceived to be the interfering subject matter. The interference counts here are denominated "phantom" counts because none are the same as claims in either Case's patent or CPC's application. The counts are broader than claims made by either party. Significantly, both the counts and the CPC claims omit the weight limitations found in the Case patent claims. This controversy, to a great extent, centers around this omission.

After consideration of many of the arguments raised here, the board awarded priority to CPC and this decision was upheld in the district court. Our reasons for affirmance of the award are set forth below.

I

The award of priority to CPC was determined by the fact that the effective filing date of the CPC application containing the interfering subject matter, January 3, 1967, preceded by three months the filing date of Dr. Case's application leading to the issuance of the '471 patent. Dr. Case offered no evidence to establish an earlier date. Thus, the dispute in this interference is not directed to dates of invention but to collateral matters.

The essence of Case's case is that no interference was properly declared. In particular his arguments center on the propriety of the phantom counts of the interference.

II

As an initial matter, Dr. Case argues that the interference was improper because the board refused to review the patentability of the counts of the interference over the prior art. The board held that its jurisdiction did not extend to this issue, and we are entirely in agreement. In an interference, the issue is priority of invention. 35 U.S.C. Sec. 135. ¹ Only that issue and issues ancillary thereto are within the jurisdiction of the Board of Patent Interferences. Tofe v. Winchell, 645 F.2d 58, 209 USPQ 379 (CCPA 1981). It is correct that an application may not be placed in interference until it has been examined and the claims therein have been adjudged by the examiner to be allowable but for the issue of priority. However, after the matter reaches the board, the board does not reexamine the issue of patentability over the prior art and, indeed, is jurisdictionally precluded from such reexamination.

While the Court of Customs and Patent Appeals has held a number of issues to be ancillary to the issue of priority, patentability of a party's claims over prior art or patentability of the interference counts over prior art has been consistently and firmly rejected as an issue within the board's jurisdiction. Glass v. De Roo, 239 F.2d 402, 112 USPQ 62 (CCPA 1956) and cases cited therein; Kahn v. Phipard, 397 F.2d 995, 158 USPQ 269 (CCPA 1968); Tofe v. Winchell, 645 F.2d at 64, 209 USPQ at 385 (Markey, C.J., concurring). Moreover the counts of the interference serve merely as a "vehicle for contesting priority." Squires v. Corbett, 560 F.2d 424, 433, 194 USPQ 513, 519 (CCPA 1977). No purpose would be served in determining patentability of the count itself over the prior art, particularly a phantom count, which by definition neither party asserts as a claim.

Despite this authority, appellant asserts that "patentability" is always a threshold issue in an interference. In support of this position appellant makes an elliptic quotation from Hilborn v. Dann, 546 F.2d 401, 403, 192 USPQ 132, 134 (CCPA 1976), for the proposition "[T]he 'threshold' question .... is patentability of the count." The quotation merely illustrates the delusion in citing as precedent a sentence from a judicial opinion without regard to the issue before the court. Whether the board must determine patentability over prior art in the interference proceeding was not an issue in Hilborn. The party Hilborn sought a writ of mandamus to compel resumption of a suspended interference and to preclude review by the Commissioner of a decision by the primary examiner that Hilborn's application (which contained the count as a claim) was not entitled to be in the interference. The issue concerned the court's authority to control the Commissioner's exercise of discretion in setting up or dissolving an interference, not the jurisdiction of the board. In any event, the precedent which is controlling has been indicated above.

Dr. Case also asserts that the phantom counts are "so broad as to fail to particularly point out and claim the invention in issue, and the 'phantom' counts are thus unpatentable under 35 U.S.C. Sec. 112."

Case confuses "claims" and "counts" throughout his argument but never is wider of the mark than here. The counts are not claims to an invention by either party. The purpose of the count is to determine what evidence is relevant to the issue of priority. Squires v. Corbett, 560 F.2d at 433, 194 USPQ at 518-19. 35 U.S.C. Sec. 112, second paragraph, relates only to actual claims. ² While an attack can be made against the count of an interference because of its breadth, as discussed infra, the foundation for this challenge does not lie in 35 U.S.C. Sec. 112.

One final "patentability" issue is raised by appellant's argument that CPC failed to name a co-inventor in the Molotsky application. The Court of Customs and Patent Appeals...