Conner v. Joris

• Decision Date: 21 February 1957
• Docket Number: No. 6225.,6225.
• Citation: 44 CCPA 772,241 F.2d 944
• Parties: Joshua C. CONNER, Appellant, v. George G. JORIS, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

44 CCPA 772, 241 F.2d 944 (1957)

Joshua C. CONNER, Appellant, v. George G. JORIS, Appellee.

No. 6225.

United States Court of Customs and Patent Appeals.

February 21, 1957.

Kenyon & Kenyon, New York City (Clinton F. Miller, Wilmington, Del., Solon B. Kemon, Theodore S. Kenyon, and Malvin R. Mandelbaum, New York City, of counsel), for appellant.

Gordon A. Wilkins, New York City (George B. Campbell and Robert A. Harman, New York City, of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON retired, Associate Judges.

JOHNSON, Chief Judge.

This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention, as claimed in the single count hereinafter set forth, to the senior party, George C. Joris (hereinafter referred to as Joris). The single count in issue reads as follows:

"In a process for oxidizing cumene to cumene hydroperoxide in liquid phase with elemental oxygen as oxidizing agent, the improvement which comprises maintaining solid sodium bicarbonate in contact with said cumene, at reaction temperature in the range between about 60°C and about 90°C."

The present interference was originally declared between Joris patent No. 2,577,768, filed July 19, 1949, and issued December 11, 1951, and a Lorand and Reese application No. 279,241, filed March 28, 1952, which application was assigned to Hercules Powder Co. This application was a continuation-in-part of application No. 257,671, filed November 21, 1951, which, in turn, was a continuation-in-part of parent application No. 31,396, filed June 5, 1948.

Counsel for Lorand and Reese moved to substitute application No. 317,589, filed by Joshua C. Conner, Jr. (hereinafter referred to as Conner) on October 29, 1952, for that of Lorand and Reese, alleging that Conner had been found to be the true inventor as against Lorand and Reese. This motion was granted.

Testimony was taken on behalf of Conner, but Joris took none. Both parties filed briefs and made oral arguments before the board.

The party Joris relies for priority of invention on the filing date of the application for his patent.

The record indicates, and this point was not contradicted, that Conner conceived the invention here involved in February, 1948. He relies on an actual reduction to practice, based upon a series of tests conducted in May, 1948.

There is no question as to the fact that the count is adequately supported by the disclosures of each of the parties in suit.

Joris originally contended, before the board below, that Conner is estopped from claiming priority of invention by reason of his delay in filing (more than four years), but this contention was disposed of by the board and is not pressed here by Joris.

The board, having found that Conner had not sustained the necessary burden of proof of actual reduction to practice, concluded that priority of invention must be awarded to Joris.

The sole question here is whether the tests conducted by Conner in May, 1948, constituted an actual reduction to practice. If so, priority of invention must be awarded to Conner.

Since Conner's filing date is subsequent to the issue date of the Joris patent, Conner has the burden of proving priority of invention beyond a reasonable doubt. Walker v. Altorfer, 111 F.2d 164, 27 C.C.P.A., Patents, 1130.

It appears from the record that Conner, and others who testified on his behalf, were, at the time of the alleged reduction to practice, in the employ of the Hercules Powder Co., which is the real party in interest. Conner's testimony clearly establishes that his work directed towards the process recited by the count in issue had a direct bearing on commercial operations then in progress at the Hercules plant in Brunswick, Georgia. He testified that it was his intended purpose to find a method of oxidizing cumene to cumene hydroperoxide in high yields. In light of the foregoing testimony, it is as well evident that his purpose was to increase yields at the plant.

Though the cumene then in use at the plant was impure and was subjected to no special pretreatment prior to its introduction into the reaction mixture from which the cumene hydroperoxide product was formed, all of the cumene used by Conner in his experiments was specially pretreated.

The testimony as to the effect of the pretreatment on the subsequent cumene oxidation process was conflicting and indicated that said pretreatment might affect both the yield and the reaction rate of the process.

On the strength of the foregoing, the board concluded that Conner had not sustained his burden of proving practical utility pursuant to the intended purpose of the process recited in the here involved count, citing as its authority Balogh v. Crot, 176 F.2d 923, 37 C.C.P.A., Patents, 707; Powell v. Poupitch, 167 F.2d 514, 35 C.C.P.A., Patents, 1080; Burns v. Curtis, 172 F. 2d 588, 36 C.C.P.A., Patents, 860; Saklatwalla v. Marburg, 172 F.2d 227, 36 C.C.P.A., Patents, 791; Landon v. Ginzton, 214 F.2d 160, 41 C.C.P.A., Patents, 950.

Quoting directly from the Balogh case,¹ 176 F.2d 926 the board concluded that since the cumene used by Conner as a starting material in his experiments was different from that used in the operations of the Brunswick plant, and since Conner had not proved that the elaborate pretreatment had no effect on the oxidation rate or yield of the cumene, his tests did not simulate the actual service conditions in the process which he was seeking to improve upon and were therefore not sufficient to constitute an actual reduction to practice.

We are of the opinion that the board has erred in its application of the test of utility.

It is elementary that, excepting plants and designs, an invention is not reduced to practice until its practicability or utility is demonstrated, Rivise & Caesar, Interference Law and Practice, Vol. 1 (1940), § 138, and that this utility is that pursuant to its intended purpose, Landon case, supra.

In those cases where actual tests are required to demonstrate the practicability or utility of the invention, the tests must simulate actual service conditions with sufficient clearness to render it reasonably certain that the subject matter will perform its intended function in actual service. Chittick v. Lyons, 104 F.2d 818, 26 C.C.P.A., Patents, 1382; Powell v. Poupitch, supra. It is immaterial that the tests employed were on a laboratory scale, provided the foregoing requirements are met. Chittick case, supra.

In the instant case, the process of oxidizing cumene to cumene hydroperoxide by means of air or molecular oxygen was known, as is admitted by Conner. There is no question but that the inventive feature of the count resides in the use of solid sodium bicarbonate in the oxidizing process. The purpose of the sodium bicarbonate may be gleaned from the following portion of Conner's specification:

"* * * none of the previously known processes have been successful in effecting substantial yields of a, a- dimethylbenzyl hydroperoxide another name for cumene hydroperoxide alone. Under the conditions practiced in prior procedures the hydroperoxide has not been obtained in good yield and to the exclusion of other reaction products. The oxidation instead has led to mixtures containing substantial amounts of acetophenone and a, a- dimethylbenzyl alcohol.

"Now in accordance with this invention it has been found that a, a- dimethylbenzyl hydroperoxide may be prepared to the practical exclusion of secondary reaction products * * *."

And, in another portion of Conner's specification it is said:

"The process of this invention produces high yields of a, a-dimethylbenzyl hydroperoxide while at the same time minimizing the formation of other reaction products * * *."

Neither in Conner's specification nor in the count do we find any statement which adds, insofar as intended purpose is concerned, to the aforequoted purposes of the Conner process. Nothing is said, either in the specification or count, about the use of either "pure" or "impure" cumene. The word "cumene," wherever used by Conner, is absolute and unqualified.

In going beyond both the count and the specification to glean Conner's intended purpose the board has gone far beyond any position supported by the cases cited or any that we have been able to find.

As was stated in the Landon case, supra 214 F.2d 163:

"`The patent application may reveal a number of purpose for the same invention. The inventor need prove only one practical use; only one useful result or effect. * * *\'"

In the instant case, the "actual service conditions" necessary to constitute the test otherwise acceptable to prove actual reduction to practice do not refer to the use of the same purity cumene as was used in the commercial operations at Hercules but to the operating conditions, such as temperature, etc., which would be employed if the pretreated cumene of Conner were used on a commercial scale. We have no doubt that these conditions were, in fact, employed in the tests conducted by Conner and his associates.

It remains to be decided whether or not Conner's tests were sufficient to demonstrate the utility of the here involved process, viz — whether the tests indicated either an increased yield of cumene hydroperoxide or a minimizing of the formation of other reaction products.

The record indicates that the essential experiments relied upon by Conner to establish actual reduction to practice (the May 3-6, 1948, run) were performed by one Hicks, a research chemist employed by Hercules, under the direct supervision of Conner. Extensive notebook entries of the observations and results of these experiments were made at the time of the run, and both Conner's and Hicks' names were signed on each page of the notebook on which entries were made. (Conner Exhibits Nos. 4A, 4B, 4C.)

At periodic intervals during the run, samples were removed by Hicks and sent to the Analytical Division...