Hansgirg v. Kemmer

• Decision Date: 27 February 1939
• Docket Number: Patent Appeal No. 4077.
• Citation: 40 USPQ 665,102 F.2d 212
• Parties: HANSGIRG v. KEMMER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

40 USPQ 665, 102 F.2d 212 (1939)

HANSGIRG v. KEMMER.

Patent Appeal No. 4077.

Court of Customs and Patent Appeals.

February 27, 1939.

Brown, Critchlow & Flick, of Pittsburgh, Pa. (Jo. Baily Brown and Fulton B. Flick, both of Pittsburgh, Pa., of counsel), for appellant.

H. C. Bierman, of New York City, for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

BLAND, Associate Judge.

This is an appeal by the junior party Hansgirg from a decision of the Board of Appeals of the United States Patent Office, affirming that of the Examiner of Interferences awarding priority of invention in two counts of an interference, which counts define an invention relating to a process of producing substantially pure magnesium.

The interference involves Kemmer's application, serial No. 542,104, filed June 4, 1931, and Hansgirg's patent, No. 2,003,487, issued June 4, 1935, on an application filed February 3, 1933. Both counts were taken from the Hansgirg patent. Since Hansgirg's dates were all subsequent to those of Kemmer, the sole issue raised in the interference related to the right of Kemmer to make claims corresponding to the counts.

The invention as defined by the counts is particularly concerned with a process of producing magnesium which involves the removal of dust from magnesium vapor before it is condensed, the dust removal step being regarded as the novel feature of the invention. It was old in the art, prior to the entrance of either party into the field, to distill magnesium vapor from magnesium powder whether in powdered form or in the form of briquettes, and then to subsequently condense the same into metallic magnesium.

The record shows that the Primary Examiner, when Kemmer attempted to claim the invention of these counts in his said application, ruled that Kemmer's disclosure did not warrant the allowance of the claims. He held that Kemmer's disclosure did not show the sequence of steps required by the claims and that the matter which he inserted in his amended application, which was to afford a basis for said claims, was new matter.

Thereafter, Kemmer filed a motion in another interference between himself and Hansgirg, involving a different application and patent, and sought to add for interference purposes the claims of the Hansgirg patent which are the present counts. The Primary Examiner ruled that Kemmer did not disclose the invention. Upon appeal to the Board of Appeals, the decision of the Primary Examiner, holding that Kemmer could not make the proposed counts, was reversed, one member of the board dissenting. The present interference was then declared, and on account of the respective dates as is above shown, Hansgirg was ordered to show cause why judgment on the record should not be entered against him. Hansgirg filed answer which amounted to a motion to dissolve, claiming that Kemmer's application did not disclose the invention. The Examiner of Interferences, in view of the ruling of the board heretofore referred to, overruled Hansgirg's motion and, on the record, awarded priority to Kemmer. Hansgirg appealed to the Board of Appeals, which was the same board that had rendered the decision on the appeal from the Primary Examiner in the other interference. It again, by a majority opinion, one member dissenting, held that Kemmer could make the counts and affirmed the action of the Examiner of Interferences in awarding priority to him. Hansgirg then took an appeal to this court and the sole question presented is the right of Kemmer to make the claims corresponding to the counts.

Count 2 is similar in all respects to count 1, except that it contains the provision that the heating of the material containing the metallic magnesium in order to liberate the magnesium vapor is done under reduced pressure. For the purpose of this appeal, both counts may be regarded as identical. Count 1 reads as follows: "1. The process for producing substantially pure magnesium which comprises heating material containing metallic magnesium, to liberate magnesium vapor therefrom, removing the resulting vapor by a non-oxidizing gas from the heated zone, separating out dust from said vapor, and thereafter passing it into a condensation zone, and cooling it to condensation point."

It will be noticed that method count 1 contains the following five steps:

1. Heating the material containing metallic magnesium.

2. Removing the resulting vapor by a non-oxidizing gas from the heated zone.

3. Separating dust from the vapor.

4. Thereafter passing it into a condensation zone.

5. Cooling it to a condensation point.

Hansgirg argues here that neither in specification nor claims in the Kemmer application under consideration is there any mention of dust or its removal; that Kemmer never attempted to claim the subject matter, which is the heart of the invention involved, until after he had become advised of the Hansgirg disclosure in a Canadian patent; that the third stage of separating dust from vapor is a distinct and separate step from the other steps of the process, which follows the removal of the magnesium vapor from the heated zone, and that the counts must be so construed, if the same is to be regarded as valid, in view of the prior art; that since the counts are taken from the Hansgirg patent, they must be construed in the light of the teachings of the patent and that Hansgirg shows a separate step with a screen for removing the dust interposed between the vaporizing material and the condensation chamber; that in the Kemmer application the dust problem was not considered and no mention of screening the dust from the vapor either in the heating zone or elsewhere is disclosed.

Kemmer relies for disclosure of the subject matter of the counts on the following language in his application: "In order to obtain highly refined magnesium metal I subject the metal obtained as above...