Corbett v. Chisholm

• Decision Date: 29 December 1977
• Docket Number: Appeal No. 77-526.
• Citation: 568 F.2d 759
• Parties: Herbert O. CORBETT, Appellant, v. Douglas S. CHISHOLM and Walter J. Schrenk, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

568 F.2d 759

Herbert O. CORBETT, Appellant, v. Douglas S. CHISHOLM and Walter J. Schrenk, Appellees.

Appeal No. 77-526.

United States Court of Customs and Patent Appeals.

December 29, 1977.

Stephen D. Murphy, Garden City, N. Y., for appellant.

Richard R. Trexler, Chicago, Ill., for appellees.

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and MORGAN FORD, Associate Judge, United States Customs Court.

RICH, Judge.

This appeal is from the June 30, 1976, decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (board), adhered to on reconsideration, awarding priority to junior party-patentee Chisholm et al.¹ (Chisholm) on the ancillary ground that senior party-applicant Corbett's² claims to the subject matter in issue were barred by 35 U.S.C. § 135(b). We affirm.

The Issue

The interference counts correspond exactly to claims copied by Corbett from Chisholm's patent on March 26, 1973, some 26 months after Chisholm's patent issued. The statute, 35 U.S.C. § 135(b), provides:

(b) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted. Emphasis ours.

The issue, therefore, is whether the board was correct in holding that Corbett was not claiming subject matter substantially the same as that covered by the copied claims prior to January 19, 1972, i. e., within the year after Chisholm's patent issued.

Background

The subject matter in issue is exemplified by count 1, corresponding exactly to Chisholm patent claim 1, which reads:

1. A method of preparing a sheet of thermoplastic resinous materials by extruding in an extrusion apparatus wherein the materials are arranged as a plurality of lamina having major surfaces generally parallel to the major surfaces of the resultant sheet, the steps of the method comprising

(a) providing by extruding in an extrusion apparatus a plurality of closely adjacent flowing streams of diverse thermoplastic materials in a heat plastified condition in contiguous relationship to each other, each stream having generally planar surfaces which are generally parallel,

(b) altering the cross-sectional configuration of the plurality of flowing streams by reducing the dimension of the stream in a direction generally perpendicular to interfaces between the individual streams, and

(c) increasing the dimension of the stream in a direction transverse to the direction of flow and generally parallel to the interface of the streams to form a sheet-like configuration having a plurality of layers wherein the layer interfaces are in generally parallel relationship to each other and to major surfaces of the sheet-like configuration.

Briefly described, the method comprises (a) forming a laminar stream, (b) reducing the thickness of the stream (squeezing), and (c) increasing the width of the stream (expanding). As can be seen from Chisholm's Figs. 1 and 4, the patentee contemplates reduction and expansion sufficiently severe to transpose the major and minor surfaces of a laminar stream, having layer interfaces parallel to plane 2-2 in Fig. 1, as it passes through a "transition piece" 17 illustrated in more detail in Fig. 4.

The Chisholm process is said to be particularly adapted to the formation of laminates having a relatively large number of layers of generally regular thickness.

The Corbett disclosure is identical to that discussed at length in Squires v. Corbett, Cust. & Pat.App., 560 F.2d 424, 194 USPQ 513 (1977). With the aid of annotated copies of Corbett application Figs. 1 and 2³ attached to Corbett's Supplemental Opposition to Motion to Dissolve, the relationship between the Corbett disclosure and the Chisholm patent claim is readily apparent. Corbett discloses, inter alia, methods of making multiple-layer film wherein a stream from extruder 57 is split into two streams by diverter element 64. An intermediate third stream is introduced through orifice 66 in diverter 64 to form a laminar stream with layer interfaces in the planes indicated in Fig. 2. As the annotations suggest, Corbett's process, as illustrated, reduces the thickness of (squeezes) the stream, although no such operation is expressly taught in the specification. As can be seen from Fig. 1, the Corbett process also laterally expands the film prior to extrusion, an operation described in detail in the specification as a significant object of the invention.

The Claims

Corbett relies upon four distinct sets of claims to avoid the 35 U.S.C. § 135(b) bar. The first consists of claims 24-27, originally presented in Corbett's parent application, later made the subject of the divisional application at bar, consonant with a three-way restriction requirement in the parent. Claim 24 is illustrative and reads (emphasis ours):

24. The method of forming a laminated body comprising the steps of establishing the laminar flow of a first plasticized material, establishing the laminar flow of a second plasticized material, and joining said first and second plasticized materials under pressure, and thereafter moving said joined materials with laminar flow in a divergent flow path toward an orifice opening and extruding said joined materials through said opening.

While these claims were introduced into the involved Corbett application on May 26, 1967, during the pendency of the Chisholm application, they were cancelled on September 17, 1968, some 27 months before the Chisholm patent issued.

The second set of claims relied upon by Corbett are claims 64-69 copied from a patent to Donald⁴ into Corbett's involved application on August 18, 1969. Claim 64 is illustrative and reads (emphasis ours):

64. A method for the extrusion of a composite stream of heat-plastified synthetic resinous material in a sheet-like configuration wherein the composite stream comprises at least three layers of diverse synthetic resinous material, the method comprising:

providing a first stream of heat-plastified synthetic resinous material to a restraining configuration, the restraining configuration having a generally slot-like extrusion orifice,

dividing the first stream of heat-plastified synthetic resinous material into a first substream and a second substream having a generally planar configuration,

providing a second stream of heat-plastified synthetic resinous material, the second stream having a generally planar configuration and a width substantially less than the first and second substreams, positioning the first and second substreams on either side of the second stream, subsequently,

passing the first and second substreams and the second stream through an elongate slot-like extrusion orifice, the second stream being encapsulated within the first and second substreams in the composite stream, the second stream being generally coextensive with the resultant extruded sheet, the improvement which comprises restricting the flow of the first stream generally at the point where it is divided into the first and second substreams and introducing between the first and second substreams the second stream in a generally planar configuration generally parallel to the first and second substreams and having a dimension substantially less in width then the first and second substreams, and passing the first and second substreams and the second stream to the extrusion orifice by means of a tapering configuration which converges toward the orifice.

The processes envisioned by Donald as defined by such claim language can be gleaned from Donald patent Figs. 1 and 3, the latter being a sectional plan view in the direction 3-3 shown on the former.

The third claim upon which Corbett relies, claim 70, was copied from a patent to Squires⁵ into the involved application on September 23, 1970. The relationship between the invention of Squires and the invention of Corbett was discussed at length in Squires v. Corbett, supra. For purposes of this case, Squires' copied patent claim is self-explanatory.

70. A process for the extrusion of multiple-layered sheeting of thermoplastic resin, said steps comprising the steps of (a) joining in a tube, at least two laminar-flow streams of molten thermoplastic resin into a combined stream of molten thermoplastic resin which has a sharply defined juncture between the components of the combined stream,

(b) passing said combined stream of molten thermoplastic resin into a manifold of a sheeting extrusion die the juncture plane(s) between each of the individual molten thermoplastic resin components within the manifold being parallel to the principal direction of flow of the resin as it passes from the manifold and takes on the shape of sheeting, and

(c) whereby a multiple-layered sheeting wherein the individual layers of thermoplastic resin are of substantially uniform thickness over substantially all of the width of the sheeting is formed. Emphasis ours.

Finally, Corbett relies upon amended apparatus claim 64, said to be pending and allowed in Corbett's parent application since October 1, 1969.⁶ Parent claim 64 is clearly directed to the sheet-extruding apparatus including a diverter element illustrated in Corbett Figs. 1 and 2 and reads (emphasis ours):

64. An apparatus for extruding laminated plastic products comprising an extrusion die defining a first passageway for fluid materials, said first passageway having a narrow, elongated discharge orifice, a first extruder, a second extruder, a first conduit having one end connected to said first extruder, a second conduit having one end connected to said second extruder, a flow dividing means comprising a solid diverter and two spaced channels, said diverter extending completely across said first passageway and having an internal passageway extending longitudinally therethrough, said channels each communicating at one end with said first passageway and at the other end with

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