Gyro Process Co. v. Coe

• Decision Date: 07 August 1939
• Docket Number: No. 7191.,7191.
• Citation: Gyro Process Co. v. Coe, 107 F.2d 195 (D.C. Cir. 1939)
• Parties: GYRO PROCESS CO. v. COE, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

107 F.2d 195 (1939)

GYRO PROCESS CO. v. COE, Commissioner of Patents.

No. 7191.

United States Court of Appeals for the District of Columbia.

Decided August 7, 1939.

Ralph H. Hudson, of Washington, D. C., and Thomas E. Scofield and Henry L. Shenier, both of Kansas City, Mo., for appellant.

R. F. Whitehead, Solicitor, United States Patent Office, for appellee.

Before STEPHENS, MILLER, and EDGERTON, Associate Justices.

STEPHENS, Associate Justice.

This is an appeal from a decree of the District Court of the United States for the District of Columbia dismissing, after a hearing on the merits, a bill in equity seeking under Rev.Stat. § 4915, 35 U.S.C. A. § 63, an order authorizing the appellee Commissioner of Patents, hereinafter referred to as the Commissioner, to issue a patent to the appellant Gyro Process Company, for a process of cracking hydrocarbon oil. The dismissal was based upon lack of patentability over the prior art and upon res adjudicata held to arise from two decisions within the Patent Office. The claims involved in the case are Nos. 31, 32 and 33 of an application filed by Clive M. Alexander April 5, 1924, and assigned by him to the Pure Oil Company and by the latter to the appellant.

The Alexander process may be explained by reference to Illustration 1. Oil such as a heavy hydrocarbon is introduced into coil 46 in a furnace 31 where it is heated to vaporizing temperature. It is then introduced into chamber 40 where the resulting vapors are separated from the unvaporized portion. The latter is then passed into reaction chamber 43. The vapors ascend through vertical pipe 6 into pipes 5 located in another furnace and are there further heated until cracking occurs. The cracked vapors then descend through vertical pipe 7 and are introduced into reaction chamber 43. They are still sufficiently hot, when they thus come into contact with the unvaporized oil introduced as above described into the reaction chamber, to cause cracking to occur in this oil without the application of additional heat. All of the cracked gases, i. e., those produced in the vapor phase cracking as well as those from the liquid phase cracking, then pass out of the chamber 43, through fractionating column 22, and then through condenser 26.

The facts relating to the rulings upon the ground of res adjudicata are as follows: In ex parte proceedings on Alexander's application, claims 1-11 were allowed and claims 23-30 rejected. This rejection was affirmed by the Board of Appeals and was not thereafter attacked either by an appeal to the Court of Customs and Patent Appeals or by a bill in equity. Alexander then amended his application to cancel all claims except 1-11 and to add claim 31, and entry of this amendment was allowed. There was at this time pending an interference involving applications of Murphy, Seguy, and Tuttle, the latter being owned by the appellant. Through Tuttle the appellant moved to bring the Alexander application into interference with the other parties, Murphy and Seguy, and proposed a count to this end. The Examiner of Interferences denied this motion upon the ground that the proposed count was unpatentable over the prior art and ruled, upon his own motion, that claim 31 was unpatentable as substantially the same as the proposed count. Also the Examiner dissolved the interference upon the ground that the count therein was not patentably distinct from the proposed count, and was itself therefore not patentable over the prior art. No appeal was taken from these rulings. Alexander in ex parte proceedings then moved to add claim 32 to his application and asked that a patent be issued on claims 1-11, 31 and 32. The Primary Examiner rejected claims 31 and 32. Alexander then moved to add claim 33 and requested reconsideration of the rejection of claims 31 and 32; but the Primary Examiner rejected claim 33 and denied the request for reconsideration.¹ These rulings were affirmed by the Board of Appeals.² This final ruling rejecting all three of the claims, 31, 32 and 33, is the subject of the present suit.

In dismissing the bill the trial court held that: (1) claims 31, 32 and 33 were substantially the same as claims 23-30, and the applicant was therefore in respect of them estopped by failure to appeal from the earlier affirmance by the Board of Appeals of the rejection of claims 23-30; (2) the appellant was estopped as to claims 31, 32 and 33 by failure to appeal from the decision of the Examiner of Interferences "holding claim 31 of the Alexander application unpatentable"; (3) claims 31 and 32 were not patentable over the patent to Ruff, No. 1,325,582, in view of the patent to Egloff and Benner, No. 1,835,765; (4) claim 33 was not patentable over the patent to Knox, No. 1,428,641. Each of these four holdings is assigned as error.³

1. In the fifth assignment the appellant asserts that the trial court erred: "In holding and deciding that the Gyro Process Company is estopped to prosecute in the Alexander application assigned to it, Claims 31, 32 and 33 because of the failure to seek a review of the first decision of the Board of Appeals in the Alexander application." The decision of the Board of Appeals here referred to is the decision affirming the Examiner's rejection of claims 23-30.

For reasons hereinafter stated we hold that claims 31 and 33 are unlike claim 24 (taken as typical of claims 23-30) and are therefore not barred by the rejection of claim 24 and the failure to appeal therefrom. We hold claim 32 to be like claim 24 and hence barred. There would be no end of Patent Office proceedings if the failure to appeal from the final rejection of one claim were not a bar to subsequently presented similar claims. The appellant contends that claim 32 differs from claim 24 because of the limitation in the former of heating the oil in an "elongated confined stream," and the further limitation of "flashing the oil into vapors and unvaporized oil." We think neither of these limitations differentiates claim 32 from claim 24. The specification discloses that heating the oil in an elongated confined stream is simply heating it in a coil. The use of a coil in the heating step of the process does not patentably differentiate the process from one wherein the heating step might be performed by any other suitable means — so long as the result is heating to vaporization temperature. In respect of flashing: An examination of the briefs and specification reveals that that term, as used in claim 32, is synonymous with the phrase "to vaporize portions of said oil" in claim 24. It is not used in the technical sense of "flashing" as a term of art.⁴ The appellant contends, upon the theory that claims 31 and 24 were in substance the same, that allowance of claim 31 by the Examiner operated as a reversal of the rejection of claim 24 and thus removed the bar of res adjudicata. Since we hold that claim 31 differs from claim 24, we need not decide the correctness of this contention.

We think that claims 31 and 33 differ from claim 24 in that they state that reduction of unvaporized oil to a heavy residue is accomplished by "the sensible heat" of the cracked vapors. The omission of this limitation in claim 24 makes the latter so broad as to permit the use of external heat. The accomplishment of cracking in the liquid phase without the use to any substantial extent of heat other than the "sensible heat" of the cracked vapors is one of the salient features of Alexander's process. We think therefore that the appellant was entitled to have claims 31 and 33 compared with the prior art and not merely rejected because similar to claim 24.

2. In the seventh assignment the appellant asserts that the trial court erred: "In holding and deciding the Gyro Process Company is estopped to prosecute in the Alexander application assigned to it Claims 31, 32 and 33 because of its failure to prosecute an appeal in the Patent Office from the decision of the Examiner of Interferences in Interference No. 67,970, Murphy vs. Seguy vs. Tuttle, holding Claim 31 of the Alexander application unpatentable."

While the ruling of the trial court refers to the decision of the Examiner of Interferences holding Alexander's claim 31 unpatentable, we think that the Patent Office ruling actually involved was that which, for the reason that in the Examiner's view the proposed count was unpatentable over the prior art, denied the motion to add Alexander to the interference. Since the motion to add Alexander had been denied, the patentability of claim 31 was not before the Examiner; and since Alexander was not added to the interference, the Examiner's dissolution thereof upon the ground of unpatentability of the count of the interference itself did not involve Alexander.

We think that the appellant was not "estopped" by failure to prosecute an appeal within the Patent Office from the decision of the Examiner of Interferences denying, upon the ground referred to above, the motion to add Alexander. In Gold v. Gold, 1909, 34 App.D.C. 229, the applications of Edward Gold and Egbert Gold were involved in an interference which was dissolved upon the ground, among others, that the issue was not patentable over the prior art. Neither party appealed, but each applicant was referred back to the Primary Examiner for separate action. Edward Gold then amended his claims and they were reconsidered and allowed by the Examiner in Chief. Egbert Gold's application was also reconsidered, and the interference was then re-declared. The new claims were not essentially different from the old ones. After a hearing in the interference thus re-declared, the decision was in favor of Edward Gold. Egbert Gold then appealed to the Commissioner, urging as one ground of appeal that the question of patentability of the issue had been finally adjudicated upon the original motion to dissolve and was therefore concluded as between the parties. The Commissioner denied the effect thus claimed for the...