Frilette v. Kimberlin

• Decision Date: 26 June 1969
• Docket Number: Patent Appeal No. 8141.
• Citation: 412 F.2d 1390,162 USPQ 148
• Parties: Vincent J. FRILETTE and Paul B. Weisz, Appellant, v. Charles Newton KIMBERLIN, Jr. and Elroy Merle Gladrow, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

162 USPQ 148, 412 F.2d 1390 (1969)

Vincent J. FRILETTE and Paul B. Weisz, Appellant, v. Charles Newton KIMBERLIN, Jr. and Elroy Merle Gladrow, Appellee.

Patent Appeal No. 8141.

United States Court of Customs and Patent Appeals.

June 26, 1969.

Oswald G. Hayes, Raymond W. Barclay, New York City, Richard K. Stevens, Davidson C. Miller, John F. Witherspoon, Washington, D. C., attorneys of record, for appellant; Stevens, Davis, Miller & Mosher, Washington, D. C., of counsel.

Whelan, Chasan, Litton, Marx and Wright, Seymour Stahl, Linden, N. J., for appellee; Malvin R. Mandelbaum, Robert D. Fier, Douglas G. Brace, Kenyon & Kenyon, New York City, of counsel.

Before RICH, Acting Chief Judge, ALMOND and BALDWIN, Judges.

BALDWIN, Judge.

Frilette and Weisz (Frilette et al.) appeal from the decision of the Board of Patent Interferences awarding Kimberlin and Gladrow (Kimberlin et al.) priority as to the two counts in interference No. 92,280, involving Kimberlin et al. patent No. 2,971,903¹ granted on an application filed February 5, 1957 and an application of Frilette et al.² filed on September 26, 1958. The Kimberlin et al. patent is assigned to Esso Research and Engineering Company and the Frilette et al. application to Mobil Oil Corporation.³

As junior party having the burden of proving priority by a preponderance of the evidence, Frilette et al. have submitted testimony and documentary evidence which they advance as showing actual reduction to practice of count 1 prior to February 5, 1957 and conception of count 2 prior to that date coupled with diligence to a subsequent actual reduction to practice.

Kimberlin et al. introduced no evidence of activities prior to their February 5, 1957 filing date and are thus restricted to that date for conception and reduction to practice.

The Subject Matter in Issue

The subject matter in issue relates to a process using a new type of aluminosilicate catalyst for upgrading hydrocarbons. In contrast to older aluminosilicate catalysts which were amorphous gels comprising pores having a wide range of sizes from 5 to as much as 200 Angstroms⁴ in diameter, the catalysts involved here comprise highly crystalline material characterized by pores of nearly uniform dimensions in the range of about 6 to 15 Angstroms.

The counts, which are verbatim copies of claims 1 and 2 of the Kimberlin et al. patent read:

1. A process for upgrading hydrocarbons which comprises contacting a hydrocarbonaceous fluid in a conversion zone at elevated temperatures with a crystalline metallic aluminosilicate catalyst having uniform pore openings between about 6 and about 15 Angstrom units, said material being the sole conversion catalyst in said zone and recovering an upgraded hydrocarbon product having a molecular weight no higher than said first named hydrocarbonaceous fluid.

2. The process of count 1 wherein said catalyst comprises a member of the alkaline earth group.

Frilette et al. are involved on modifications of these counts which define the size of the pore openings as between "about 6 and about 13" Angstrom units instead of between "about 6 and about 15" Angstrom units.

Preliminary Issue

Before us, Frilette et al. have devoted a very substantial part of their briefs and their entire oral argument to an issue based on the fact that Kimberlin et al. were granted a reissue⁵ of their involved patent on April 11, 1967, which was after the board made its award of priority to them on October 6, 1966 and adhered thereto on reconsideration. The application for the reissue patent was filed during the pendency of the interference and Frilette et al. were notified of its filing and given access thereto by the Commissioner in accordance with the Patent Office practice,⁶ such notice being received by Frilette et al. after the expiration of the motion period. The reissue application had been prosecuted to what the examiner deemed allowable condition during the interference proceedings, but repeated petitions by Kimberlin et al. for issuance of the patent thereon before the priority decision of the board were denied. Included in the reissue patent, which embodies the same specification as the original patent are two claims duplicating the interference counts and seven other claims which Frilette et al. state are either identical or "substantially" identical to claims in their application. Frilette et al. further state that five of the latter claims are broader in scope than the counts of the interference.

Frilette et al. argue that, since the reissue patent has now issued and the original patent on which it is based has thus been surrendered, either the interference contest must be considered to have been abandoned by Kimberlin et al. and the proceedings terminated, or the reissue patent must be considered to have been somehow substituted for the original patent. They urge that, if the former condition exists, Kimberlin et al. have "in effect, withdrawn * * * their entire case-in-chief" and Frilette et al. are entitled to judgment. They further contend that, if the reissue patent has been substituted, the case should be remanded to the Patent Office for further proceedings. By "further proceedings" they apparently mean to include introduction of additional evidence and determination of priority as to other claims in the reissue patent.

We do not agree with those arguments of Frilette et al. In the first place, it is plain that Kimberlin et al. still have a patent claiming the precise subject matter of the counts and have not abandoned that subject matter. Also, they are still entitled to the February 5, 1957 filing date of their original application and thus plainly have not withdrawn their "case-in-chief." The question whether the board erred in its award of priority is still before us on the evidence of record and the briefs and oral arguments of the parties. No sound basis is advanced for allowing Frilette et al. to introduce any additional evidence as to the present counts.

The possibility that further interference proceedings involving the Kimberlin et al. reissue patent might be initiated to determine priority of broader subject matter provides no sound reason for delaying the determination of the present appeal by remand. Under 35 U.S.C. 135, the question whether further interference proceedings are in order is a matter for determination by the Commissioner of Patents and is not appropriate for our consideration here. Also, it is noted that Kimberlin et al. observe in their brief that refusal by us to remand "can in no way affect any rights which appellants may have to contest priority as to other claims of the reissue patent."

The appeal will therefore be considered on the merits.

The Frilette et al. Proofs

The evidence of Frilette et al. includes the testimony of a number of witnesses who were employees of Mobil at times relevant to the interference and many documentary exhibits. The exhibits were generally identified by the name of the witness who first testified concerning them, followed by sequential numbers.

Identifying the witnesses, the co-inventor, Paul B. Weisz, was a research associate heading a group within a Physics Research Section of the Mobil Laboratories at Paulsboro, New Jersey, which section was headed by Dr. Clark. The other inventor, Dr. Frilette, was an assistant of Weisz who joined Mobil in 1956. Drs. White and Prater were under Dr. Clark's direction and Rudolph Lago was a research employee who reported to Prater. Emil Mower was an assistant who did test work under Weisz but was assigned at some time in 1956 to work for Frilette. Other of the witnesses were employees of the Analytical Section of Mobil who testified concerning analytical work done either by them or under their direct supervision for others, including Frilette. Those include Sawruk, Geortler, Tierney, Wohlfarth, Wong, Bowen, Montgomery, Mollet, Webster, Milliken, Cranston, Freeman, Kitz and Herman. In addition, Kimberlin, co-patentee of the Kimberlin et al. patent, was called as a witness by Frilette et al.

The evidence shows that White attended a Gordon Research conference in June 1955 at which one of the subjects discussed was molecular sieves. Such a sieve is described in Clark Exhibit 1, a report by White dated July 13, 1955, as "a zeolite structure from which the water of hydration has been removed; NA12 (AlO2)12· (SiO2)12· 27 H2O· sic." The report states:

Several forms of this structure have been prepared with port diameters ranging from 3.0 to 5.3Å and with port diameters ranging from 10 to 13Å.

As one of the characteristics of "these zeolite structures," the report lists:

6. In the hydrogen exchange form they have catalytic cracking properties.

It appears that Weisz read this report since a notebook entry of his under date of "Aug. 2-Aug. 5" (1955) appearing in Weisz Exhibit 4 refers to "J.R.W. J. R. White report on Mol. Sieve talk at Colby."

Other exhibits include Weisz Exhibits 3 and 5. The former is a notebook entry made by Weisz in March of 1956 referring to the filter properties of a "5A port. molec. filter material" and suggesting utilization of its properties for "cracking of n-paraffins to n-paraffins of lower mol. wt. by having the `filter' particles combined as a mix with a (de) hydrogenation component * * *." Weisz Exhibit 5, a copy of a typewritten "Technical Summary Letter" of August 1955, refers to "molecular sieves, which are calcium alumina silicate crystals, * * made by Linde Air Products Company," and states that the holes in the crystal have a critical size which "admit the normal paraffins and exclude the aromatics, cycloparaffins and iso-paraffins."

Frilette himself began work at Mobil on March 1, 1956, having been hired by Clark to work on "molecular filters" under Weisz, an assignment that was not changed between that date and April of 1957.

Weisz Exhibit 7, a report by Weisz to Clark dated "April 1956" and entitled "Operations Summary — P.B.W." includes, under...