Harding v. Steingiser

• Decision Date: 20 June 1963
• Docket Number: Patent Appeal No. 6893.
• Citation: 51 CCPA 701,318 F.2d 748
• Parties: James HARDING, Appellant, v. Samuel STEINGISER and Ival O. Salyer, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

51 CCPA 701, 318 F.2d 748 (1963)

James HARDING, Appellant, v. Samuel STEINGISER and Ival O. Salyer, Appellees.

Patent Appeal No. 6893.

United States Court of Customs and Patent Appeals.

June 20, 1963.

Watson, Leavenworth, Kelton & Taggart, John T. Kelton, New York City (Paul A. Rose, Washington, D. C., and Howard K. Kothe, New York City, of counsel), for appellant.

John D. Upham, St. Louis, Mo. (F. M. Murdock and J. Russell Wilson, St. Louis, Mo., of counsel), for appellees.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

WORLEY, Chief Judge.

Harding, the junior party¹ in an interference² seeks reversal of the decision by the Board of Patent Interferences which awarded priority of invention to the senior party, Steingiser et al.³

The nature of the invention in issue is suggested by the single count, which reads:

"2. Stabilized polyethylene composition comprising a normally solid polymer of ethylene and a stabilizing amount below 0.5 percent of 4,4\'thiobis (6 tert-butyl-meta-cresol)."

Both parties have discovered that polyethylene compositions may be stabilized by addition of small amounts of 4,4'thiobis (6 tert-butyl-meta-cresol) hereinafter referred to by its trade name, Santowhite Crystals. They indicate in their applications that the claimed composition has superior stability as to electrical properties.

Steingiser stands on his filing date. Harding, as the junior party, has the burden of proving priority by a preponderance of the evidence. The board concluded, and we agree, that the basic issue is whether Harding can establish prior reduction to practice.

The evidence on behalf of Harding describes an experimental project, said in his brief to have been "directed to finding an anti-oxidant for polyethylene electrical insulating material which exhibited better resistance to discoloring than those in use." In that project polyethylene compositions using various antioxidants were subjected to hot milling to accelerate oxidative degradation of the resin in order to determine the efficacy of the antioxidants; using power factor, dielectric constant and reflectance tests as criteria for determining the effect of the degradation caused by the hot milling.

The board made certain findings of fact, which appellant does not challenge, and which we find supported by the record. Harding, assisted by one Hyer, began a series of experiments in the latter part of 1952 to find an effective stabilizer or antioxidant for polyethylene to be used as electric insulating material which would exhibit better resistance to discoloration than stabilizers then in use. Among the antioxidants tested was Santowhite Crystals, the compound called for by the count. Hyer actually prepared the compositions, which after being hot milled, were pressed into plaques. The plaques were then submitted to the Physical Testing Laboratory (operated by the assignee of the Harding application) for power factor, dielectric constant and reflectance tests. Harding, upon receipt of the results reported to him by the laboratory, copied them into his notebook or weekly reports. As a result of Harding's work, which had been done at the request of a group of research personnel, designated the Electrical Insulating Group, Santowhite Crystals were "recommended for further trial." Griesser, who serves as a corroborating witness, was then assigned to repeat and carry forward Harding's work.

Appellant relies on Griesser's work for establishment of Harding's alleged reduction to practice. Griesser's activities commenced in March 1953 and terminated near the end of the following month. During that period he prepared three batches of polyethylene for testing; one control containing no antioxidant and two containing 0.1% and 0.2% Santowhite Crystals respectively. Each batch was milled at 160° for two hours, with samples taken therefrom after five minutes and two hours respectively. Those samples, after being pressed into plaques, were sent with a standard request form to the Physical Testing Laboratory. The test results obtained by the laboratory were recorded in duplicate on a standard form, a copy being retained in the files of the laboratory, and the original returned to Griesser. Due to space considerations, the laboratory copy was discarded after about one year. When the original form was returned to Griesser, he copied the results into his notebook and retained the originals for two or three years, after which time they were also thrown out due to shortage of filing space.

The board found the evidence regarding the laboratory test results not to be original record evidence, and held that since no person who ran the tests was called to testify, such evidence was merely hearsay.⁴

In addition, the board found that the purpose of Harding's experimentation was to find suitable replacements for antioxidants then in use for electrical insulation compounds, and that:

"* * * The party Harding has not made any tests in respect to the contemplated practical use in electrical wiring nor has he made any tests duplicating the working conditions in any other practical use. Mere production of the composition after one or two hours of hot milling is not a basis for predicting success in some practical use in the absence of acceptable correlating data, and there are none. * * *" (Italics supplied.)

Hence, it concluded that Harding had not satisfied the requirements that a party seeking to prove actual reduction to practice must show that his invention worked as intended to work in its practical contemplated use, citing Elmore v. Schmitt, 278 F.2d 510, 47 CCPA 958.

The board went on to state:

"* * * The erratic results and the necessity for further trial show that as of March 2, 1953 (the date of Exh. 9) Harding was in the realm of uncertainty in respect to practical utility. Certainly there was no conviction of success at that time.

* * * * *

"* * * The statement that the `encouraging results * * * warrants further investigation for possible replacement of Br-254 in polyethylene electrical insulating compounds\' speaks for itself and is not such language as to denote that the composition has been successfully reduced to practice. * * *"

It held the test results to be inconclusive, and found that the necessity for further work was recognized by Harding himself. The board concluded that the test results did not prove that the product would serve the purpose for which it was designed and that, consequently, no actual reduction to practice had been established by the evidence.

Harding supports his contention that the results are proper evidence with the following reasoning: The tests conducted by the Physical Testing Laboratory at Harding's and Griesser's requests were routine in nature; the results were copied on temporary laboratory report forms, from which Harding and Griesser copied them into their notebooks which are permanent records; the original lab reports, having served their purpose, are routinely destroyed or discarded due to space requirements; since accurate copies of the original results were made by Harding and Griesser, both of whom were available for cross-examination, the test results should be accepted as routine entries and accorded probative weight as evidence; and finally, they should be admitted under the Federal Shop Book Rule.

Harding contends further, that the test results establish an actual reduction to practice because they demonstrate to the satisfaction of the inventor and his associates that the test-compositions would perform their intended function in actual service. He also urges that the intended function for the composition was merely that it serve as insulating material; that such function was proved; and that it was unnecessary to prove the composition would serve specifically as electrical wire insulation.

In the view we take of the case, Harding cannot prevail even if all of the evidence submitted on his behalf is assumed to have probative value. Hence the real question becomes whether hot milling a composition consisting of polyethylene and Santowhite Crystals, followed by the testing of plaques pressed therefrom for power factor, dielectric constant and reflectance properties constitutes an actual reduction to practice of the invention in issue.

We have considered the authorities cited by appellant, but find Elmore v. Schmitt to set out the proposition of law which is controlling. We said there:

"* * * the record does not show that any one of the various tests employed by Steagall duplicated the conditions which would normally be encountered in a practical application of the invention in issue with respect to the resistance and character of load, nature of pulses, including voltage, duration and amplitude, and amount of capacitance used. Neither is it shown that the tests accurately reproduced the conditions of temperature, vibration, or sustained operation which would usually be encountered in a specific use.

"The question of sufficiency of laboratory tests to establish a reduction to practice has frequently been considered by this and other courts. Undoubtedly the general rule, * * * is that `A party seeking to prove actual reduction to practice must show that his invention worked as intended to work in its practical contemplated use.\'" Gaiser v. Linder, 253 F.2d 433, 45 CCPA 846; Kruger v. Resnick, 197 F.2d 348, 39 CCPA 994, and cases there cited.

The first question is, therefore, what was the practical use to which appellant intended to put his invention. Though no specific limitation with respect to utility or purpose appears in the claims, it must nevertheless be considered. In Blicke v. Treves, 241 F.2d 718, 720, 44 CCPA 753, we said:

"* * * A composition of matter cannot be a patentable invention unless it has utility. * * * Accordingly, the invention of such a composition is not complete unless its utility is either obvious or is established by proper tests, regardless of

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