Cooper v. Hubbell, Patent Appeal No. 2811.

• Decision Date: 17 December 1931
• Docket Number: Patent Appeal No. 2811.
• Citation: 19 CCPA 790,53 F.2d 1072
• Parties: COOPER v. HUBBELL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

19 CCPA 790, 53 F.2d 1072 (1931)

COOPER v. HUBBELL.

Patent Appeal No. 2811.

Court of Customs and Patent Appeals.

December 17, 1931.

H. C. Bierman, of New York City (Charles S. Grindle, of Washington, D. C., and Ellis S. Middleton, of New York City, of counsel), for appellant.

John E. Hubbell, of New York City (Clarence M. Fisher, of Washington, D. C., and W. Brown Morton, of New York City, of counsel), for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, awarding priority of invention to appellee in an interference proceeding.

The invention involved is described by the Board of Appeals as follows:

"The subject matter of the issue is a method of fumigating consisting in its most specific aspects of dispersing pulverized calcium cyanide as a cloud of dust in the atmosphere of a confined space in order to kill insects or rodents found therein as on plants, trees or in burrows or buildings. It is essential that the atmosphere of the space concerned have sufficient humidity to decompose the calcium cyanide to liberate hydrocyanic acid vapor which will thus be diffused throughout the atmosphere as generated. It is essential that the calcium cyanide does not come in contact with an excess of water since the hydrocyanic acid produced would remain dissolved in the water and consequently would not be liberated as a vapor to act as a fumigant. In the case of fumigating plants there must be no water on the leaves since the calcium hydrate which is formed by the reaction would be thus consequently in contact with the leaves and injure them. It appears further that if a quantity of water intermediate between an excess as one extreme and a slight quantity such as vapor as a minimum, is present that ammonia and ammonium compounds are formed thus resulting in loss of efficiency or even a failure as a fumigant."

There are four counts in issue, which read as follows:

"1. The method of fumigating which consists in exposing dry calcium cyanide to the action of an atmosphere having sufficient humidity to decompose said cyanide and thereby liberate hydrocyanic acid gas at a rate effective to secure the desired fumigation effect.

"2. The method of fumigating an enclosed space which consists in exposing dry calcium cyanide to the action of an atmosphere in said space having sufficient humidity to decompose said cyanide and thereby liberate hydrocyanic acid gas at a rate effective to secure the desired fumigation effect.

"3. The method of fumigating which consists in dispersing calcium cyanide in pulverulent form in an atmosphere having sufficient humidity to decompose the cyanide and thereby liberate hydrocyanic acid gas at a rate effective to secure the desired fumigation effect.

"4. A method of fumigating which comprises providing a subdivided mass of cyanide and exposing the same to moist air having a relative humidity over 30% to produce poisonous gas in toxic concentrations by hydrolysis of the said cyanide."

The application of appellant was filed on June 2, 1924, which application, it appears, is a continuation in part of an earlier application filed December 12, 1922.

The application of appellee was filed on December 7, 1921.

Appellant therefore is the junior party, and the burden of proof was upon him to prove conception prior to appellee's constructive reduction to practice, or that appellee derived the invention from him. In view of the conclusion we have reached, it is not necessary to consider the question of appellant's reduction to practice.

The Examiner of Interferences reached the conclusion that the issue was one of originality, and that appellee derived the invention from appellant through the research department of the American Cyanamid Company, of which appellant was a vice president and the appellee an employee. In reaching this conclusion, the Examiner of Interferences held that appellant instigated certain studies and experiments by said research department, resulting on April 30, 1921, in the discovery embraced in the counts. He therefore accorded to appellant said date of April 30, 1921 as his date of conception, and further held that appellee derived his knowledge of the invention through appellant, or, in other words, that appellant was the original inventor of the method in dispute.

Upon appeal, the Board of Appeals reversed the decision of the Examiner of Interferences, holding that appellant had not proved conception of the invention prior to appellee's filing date, and further holding that appellee was entitled to May, 1921, for conception, and to his filing date, December 7, 1921, for constructive reduction to practice, thereby further confirming his claim to priority.

Voluminous testimony was taken by both parties, but, in view of the conclusion we have reached, only a small portion of it need be considered.

The first question for determination is whether the record establishes conception of the invention by appellant at any time prior to appellee's filing date. If it does not, it is the end of the case, and the decision of the Board of Appeals must be affirmed.

It appears that the American Cyanamid Company is the owner of appellant's application, and for several years it had been engaged in the production and marketing of calcium cyanide, used in the mining industry for the production of gold and silver from ores, and in the production of liquid hydrocyanic acid. Appellant is an engineer, and, as a vice president of his company, his duties had been principally concerned with the design, construction, and operation of the various plants of said company. One Dr. Walter S. Landis, also a vice president of said company, was also chief technologist in charge of all experimental and development work of the company.

Appellee entered the employ of said American Cyanamid Company in July, 1917, and from that time until the latter part of 1920 served as a salesman. In December, 1920, he was put in charge of a newly formed commercial development bureau established for the purpose of promoting the sales activities of the company and finding new fields for its products. He remained in the employ of the company in this capacity until February, 1922, when he was discharged. He filed his application for patent, as before stated, on December 7, 1921, without notifying any of the officers of the company that he had done so, and never did inform them of that fact. He testified, however, that before such filing there was general talk in the office of the company that he and two other employees were to be discharged.

It appears from the testimony that fault had been found by the users of the calcium cyanide produced and marketed by said American Cyanamid Company; they asserting that the product received did not have the cyanide content stated in the invoices. It was then found that when the product was exposed to the air it would lose some of its cyanogen content.

The said Dr. Landis testified concerning the invention as follows:

"Q. Do you know the circumstances under which the invention was made? A. The subject of deterioration of calcium cyanide produced by the Cyanamid Company had been discussed a number of times and referred to the technical department for help and assistance in attempting to solve it. The technical department was never able to accomplish this result to the satisfaction of everyone. I recall that at one of the meetings of the heads of departments of the Cyanamid Company, at which Mr. Cooper, Mr. Bonn was present, Cooper made the remark why in the world we didn't try to use it since we couldn't cure it. Something to that effect, and made the suggestion why we didn't try to kill something with it, and from that remark the laboratory was put to work to see whether it was effective as a killing agent, carried out some experiments, and found that it would kill rats, rodents of that type, and from that they developed the use of this cyanide as a pest killing agent.

"Q. Who was instrumental in getting the laboratory to conduct this work? A. I was at that time in charge of the laboratory and I requested the head of the laboratory to conduct the experiments."

Later, and after a recess, Dr. Landis further testified as follows:

"Q. I will ask you to please refer to your answer to Q. 36 first question above quoted and state what you understood by the suggestions of Mr. Cooper, which you say were made?

"Mr. Hubbell: Objected to as immaterial and irrelevant.

"A. The question had been up before the executive officials of the Company here on going into fumigation here in the east — into going into fumigation of commercial warehouses, storehouses, households here in the east — using liquid hydrocyanic acid just as it was used in California for that same purpose. We debated and discussed the possible field and market for such an activity here in the east over a period of months, and it had happened that two pertinent inquiries came in for fumigation in the office here around about this time. It is my remembrance that one of them came in in February, but this happened so long ago I would not like to place the date too exactly — in connection with an ash dump out here in Flushing in which there was a terrible pest of rats which were running around the neighborhood out there and creating a lot of trouble. There had been a similar question raised about a similar ash dump up in the Bronx sometime previously. There was a question of fumigation raised up here — I have forgotten whether it was the American Museum of Natural History, or up in the Zoological Garden in the Bronx, that they had been having some difficulty up there with some of their specimens being attacked by some insect pests. Fumigators were at work here around the City of New York doing household fumigation, warehouse fumigation, ship fumigation — was...