Dreyfus v. Sternau

• Decision Date: 24 March 1966
• Docket Number: Patent Appeal No. 7563.
• Parties: Robert L. DREYFUS and John W. Harrison, Appellants, v. Martin M. STERNAU, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

53 CCPA 1050, 357 F.2d 411 (1966)

Robert L. DREYFUS and John W. Harrison, Appellants, v. Martin M. STERNAU, Appellee.

Patent Appeal No. 7563.

United States Court of Customs and Patent Appeals.

March 24, 1966.

Alvin Guttag, Washington, D. C. (C. Edward Parker, Cambridge, Mass., of counsel), for appellants.

John A. Blair, Detroit, Mich., James M. Heilman, Washington, D. C., for appellee.

Before RICH, Acting Chief Judge, and MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

ALMOND, Judge.

This is an appeal from the decision of the Board of Patent Interferences awarding priority of invention of the subject matter of interference No. 93,409 to Sternau, the senior party, on application serial No. 591,628, filed June 15, 1956. In issue is a single count copied from U. S. Patent No. 2,976,655, granted to the junior parties, Dreyfus et al. (Dreyfus), on an application filed August 20, 1959. The patent is assigned to W. R. Grace & Co., the application in suit is assigned to the Dow Chemical Co.

The count reads:

A method of forming a cover having an elastic edge comprising positioning a film of a high shrink energy polymer over and beyond the lip of a container, maintaining pressure on the film over the container, forcing the excess film downwardly around the container to form a gathered skirt and heating a band of said skirt briefly to shrink the skirt and provide a gathered but relatively elastic edge.

The issues raised by this appeal are (1) whether Sternau can support certain limitations in the count; (2) whether Sternau's application complies with 35 U.S.C. § 112; and (3) whether the count is new matter in the Sternau application.

As to the first issue, Dreyfus contends that Sternau cannot support the following limitations: (1) providing a relatively elastic edge; (2) positioning a film of a high shrink energy polymer; (3) forcing the excess film downwardly around the container; and (4) heating a band of said skirt briefly. We agree with Dreyfus as to Sternau's lack of support for the first limitation set forth above, and thus need not consider the other matters raised by this appeal.

Procedurally, this appeal comes to this court with this history. Dreyfus alleged no date earlier than the filing date of the senior party Sternau, and he was accordingly placed under order to show cause why judgment should not be entered against him. Dreyfus responded by moving to dissolve on the ground that the count is not supported by Sternau's disclosure, and that that disclosure is fatally defective in that it fails to comply with the requirements of 35 U.S.C. § 112. This motion was denied by the primary examiner. Dreyfus thereupon requested that final hearing be set for consideration of matters set forth in his motion to dissolve. The Board of Patent Interferences held that Sternau could support all the material limitations in the count.

According to Dreyfus, the covers provided by the method of the count have a variety of uses including refrigerator dish covers, bathing caps, and traypacked foodstuff covers. One method by which Dreyfus achieves a cover having a relatively elastic edge is described as follows:

In operating according to the invention the container is positioned on the turntable. The film of irradiated biaxially oriented polyethylene from 0.5 to 5 mils, e. g., of 3 mil thickness, is then positioned over the top of the container. The lever is then lowered until the upper portion of diaphragm engages the film. The diaphragm not only holds the film in place but is also evenly bends down the overlying edges of the film. The hot air blower is then started as is the turntable. The hot air forces the film in place against the sides of the container while at the same time the hot air also shrinks the film. As a result the film forms a thickened edge or bead * * * around the lip of the container. This thickened edge is usually about 5 to 10 times as thick as the film itself. As a result, an elastic edged cover for the container is formed. The cover can be removed to open the container and then can be applied again as a cover for the container due to its elasticity.

In describing the operation of a machine designed to provide covers for milk bottle hoods, TV dinner trays and the like, Dreyfus states:

After the downwardly blowing air has formed the shirred skirt then the cone is lowered further so that the lip or flange of the container rests on the circular impluse sealing ring, about 1/8 inch from the edge all around with the gathered film between the wire and the lip of the dish. The sponge applies slight downward pressure on top of the dish to maintain intimate contact all around. The impulse sealer is then operated, i. e. by heating, for 1¼ second at 450° F., to seal the wrinkles and shrink the film generally to provide a gathered but relatively elastic edge. (Emphasis ours.)

In still another portion of Dreyfus, the following is stated in describing the operation employed in making bathing caps from high shrink energy material:

A controlled amount of heat only should act on each disk of film material. Consequently, resistance wire after its original energization is almost immediately timed out by the action of the timing device. Time-out varies according to the thickness and nature of the film, but as an example, if the film be 1 mil thick irradiated polyethylene and the diameter of the ring of resistance wire be approximately 3¼ inches, time-out should occur after approximately 120 watt seconds have been released by the resistance wire.

Dreyfus defines the term "elastic" as follows:

The term "elastic" is used in its popular sense as possessing the properties of extensibility and retractibility associated with vulcanized rubber.

Sternau relates to the provision of "a closure which is an inexpensive, simple hermetic seal for a container irrespective of whether the container is made of paper, plastic, aluminum, steel, etc." The closure may consist of either an inner component of a transparent oriented plastic sheet alone or in combination with an outer component of a semirigid, moldable material, such as aluminum, paper, plastic, glass, steel, etc.

The most pertinent portion of Sternau for purposes of this appeal reads as follows:

A closure may be made using an outer single-ply cover of aluminum, or paper, etc. as a retainer for a shrinkable plastic sheet, which is substantially larger than the mouth of the container. The plastic sheet is placed on top of the container, and the cover snapped onto the container. This will create the essential condition that the film is held flat across the mouth of the container, while the rim of the film is arranged around the rim of the container in pleats protruding beyond the outer cover. Thus, when heat is applied to the rim, the protruding film will shrink, conforming to the shape of the rim of the container and forming therewith a tight seal around said rim, while the remainder of the film is pulled tightly across the mouth of the container. This third method has the advantage that the outer cover can be removed without disturbing the seal of the film portion of the closure. This process has the additional advantage that the outer cover can be repeatedly taken off and snapped back onto the container without losing its original efficiency of snapping onto the container, and locking below its rim due to its expandable, pleated rim. (Emphasis ours.)

It will be noted that the foregoing passage describes a two-ply closure, the inner ply being of a shrinkable plastic sheet and an outer ply being of aluminum, paper, plastic, etc. Referring back to the count, it will be noted that it calls for a cover made of a film of a high shrink energy polymer. It is apparent that Sternau's outer ply, being of aluminum or paper construction, cannot possibly fit the description of a "film of a high shrink energy polymer." There is no dispute as to this. There is, however, some dispute as to whether the shrinkable plastic sheet, otherwise denominated by Sternau as a heat shrinkable, oriented material, is inherently a material having a high shrink energy. We will proceed on the assumption that the shrinkable plastic sheet does meet the limitation in the count as to a film of a high shrink energy polymer. Thus, it is with regard to the inner cover that Sternau, as copier of the claims from the Dreyfus patent, must establish support for the invention of the count.

Considering the above-quoted passage from Sternau further, it is noted that upon heating, the inner ply shrinks in such a manner as to form a tight seal around the rim of the container. Nothing is mentioned concerning the elastic properties of the inner ply in its shrunken state. The outer cover is stated to have an expandable, pleated rim, but it is not readily apparent from the application how this construction is achieved. In any case, it has no bearing on the construction of the inner ply, which is the one with which we must be concerned.

It is further noted that Sternau is completely silent in the passage under discussion, as well as throughout his disclosure, as to the specifics of his operating conditions. While Sternau's specification states that "heat may be applied by hot air, hot water, steam, electricity, or even by an open flame," no temperatures are given for the heating step; no mention is made as to...