Crome v. Morrogh, Patent Appeal No. 6214.

• Citation: 239 F.2d 390,44 CCPA 704
• Decision Date: 30 November 1956
• Docket Number: Patent Appeal No. 6214.
• Parties: Lester C. CROME, Appellant, v. Henton MORROGH, Appellee.
• Court: United States Court of Customs and Patent Appeals

44 CCPA 704, 239 F.2d 390 (1956)

Lester C. CROME, Appellant, v. Henton MORROGH, Appellee.

Patent Appeal No. 6214.

United States Court of Customs and Patent Appeals.

November 30, 1956.

Marechal, Biebel, French & Bugg, and Greer Marechal, Dayton, Ohio (Lee B. Kemon, New York City, of counsel), for appellant.

Roy F. Steward, New Haven, Conn. (Merrill F. Steward, New Haven, Conn., of counsel), for appellee.

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

O'CONNELL, Judge.

This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention of the subject matter in issue in interference No. 85,061 to Henton Morrogh, the appellee in the instant proceeding. The invention involved is a gray cast iron which is defined in the following counts:

"Count 1. Gray cast iron which contains a small proportion of cerium uncombined with sulphur and in which, in its as-cast state, at least the greater part of its graphite content has a nodular microstructure, said iron containing no sulphur in excess of about 0.02 per cent.

"Count 2. Gray cast iron which contains a small proportion of cerium uncombined with sulphur and in which, in its as-cast state, at least the greater part of its graphite content has a nodular microstructure, said iron containing no sulphur in excess of about 0.02 per cent, said iron exhibiting by standard strength tests mechanical properties superior to those of comparable gray cast iron not containing cerium."

The counts originated in Morrogh's patent No. 2,488,511, granted November 15, 1949 on an application filed January 25, 1949, and on January 17, 1951 they were copied by Crome in his patent application No. 41,907, filed July 31, 1948. The Morrogh patent and the Crome application are involved in the interference here under consideration. On a motion to shift the burden of proof Morrogh was accorded the benefit of the filing date of his prior application No. 760,188 filed July 10, 1947, and was made senior party in the interference.

It appears from the record that cast iron may be either gray or white, the former type containing free carbon in the form of graphite flakes which impart the gray color to it, while in the latter the carbon present is in the form of carbides. It is possible to subject white cast iron to a process of heat treating which causes the carbides to break down with the result that nodules of carbon are formed throughout the iron. The iron so treated is malleable, while both gray and white iron, as cast, are brittle.

The Morrogh patent discloses a process which is said to result in the formation of a gray cast iron, which in the as-cast condition, contains carbon in nodular form, and which has improved mechanical properties, including greater strength. In order to obtain that result an iron is selected which has a relatively low sulphur content "preferably not more than 0.03 per cent or thereabouts," and a small amount of cerium is added to the molten iron before casting.

It is stated in the patent that the first major effect of the cerium is to combine with the sulphur to form a cerium-sulphur compound which floats to the surface, and that so long as more than about 0.02 per cent of sulphur is present the cerium is not free to dissolve in the iron. However, when the sulphur is reduced below the amount specified, the remaining cerium is dissolved, thus producing the nodular structure and improved characteristics of the cast iron.

The Crome application, like the Morrogh patent, is directed toward the production of a gray cast iron which, in the as-cast form, contains nodules of carbon, rather than the conventional graphite flakes and, like Morrogh, Crome obtains that result by adding a substance containing cerium to the iron before casting. However, the cerium is only one ingredient, forming 45 per cent of a substance known as misch metal, and there is nothing in the application to suggest that the improved casting results from the cerium rather than the other elements of the misch metal. Crome does not stress the importance of any particular sulphur content. He states that an iron mix which "has been found to satisfactorily produce this new iron" includes "less than 0.04 per cent of sulphur."

The Board of Patent Interferences held that the Crome application does not contain a disclosure supporting the interference counts, and that holding will be considered first here, since, if it is correct, the decision appealed from must be affirmed, regardless of the other questions raised by the present appeal. Giambalvo v. Detrick, 168 F.2d 116, 35 C.C.P.A., Patents, 1112.

In accordance with the settled practice, Crome, having copied the claims in issue from Morrogh's patent, has the burden of showing a clear basis for them in the disclosure of his application, Lindley v. Shepherd, 58 App.D.C. 31, 24 F.2d 606; Hansgirg v. Kemmer, 102 F.2d 212, 26 C.C.P.A., Patents, 937; Keeling v. Heid, 118 F.2d 571, 28 C.C. P.A., Patents, 1008. Furthermore, it is elementary that every express limitation appearing in a claim copied for the purpose of interference must be regarded as material in determining the right to make the count. In re Draeger, 150 F.2d 572, 32 C.C.P.A., Patents, 1217, and authorities there cited.

Each of the counts here on appeal contains the express limitations that the cast iron contains "a small proportion of cerium uncombined with sulphur," and that it contains "no sulphur in excess of about 0.02 per cent." It was the opinion of the board that the Crome application does not contain a disclosure clearly satisfying either of...