Holmes v. Kelly

• Decision Date: 09 November 1978
• Docket Number: Appeal No. 78-539.
• Citation: 586 F.2d 234
• Parties: Curtis L. HOLMES, William M. Faber, Sr., Otis F. Boykin and Gaylord L. Francis, Appellants, v. William Thomas KELLY, Leon Bruce Hornberger and Milton John Strief, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

586 F.2d 234

Curtis L. HOLMES, William M. Faber, Sr., Otis F. Boykin and Gaylord L. Francis, Appellants, v. William Thomas KELLY, Leon Bruce Hornberger and Milton John Strief, Appellees.

Appeal No. 78-539.

United States Court of Customs and Patent Appeals.

November 9, 1978.

John J. Gaydos, Elkhart, Ind., atty. of record, for appellants.

John E. Vanderburgh, Robert S. Frieman, Fullerton, Cal., attys. of record, for appellees.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Associate Judges, and FORD,^* Judge.

MILLER, Judge.

This appeal is from the decision of the Patent and Trademark Office ("PTO") Board of Patent Interferences ("board") awarding priority of invention of the counts in issue to the junior party, Kelly et al. ("Kelly"). The counts were copied by Holmes et al. ("Holmes")¹ from Kelly's patent No. 3,416,960, issued December 17, 1968, entitled "Cermet Resistors, their Composition and Method of Manufacture." The dispositive issue, which the board decided in favor of Kelly, is whether Holmes has the right to make the counts. We affirm.

Subject Matter of the Counts

The invention relates to a method of making an electrical resistor. Count 1 is illustrative.

Count 1

A method of forming an electrical resistance element including the steps of:

forming a mixture of finely ground particles of glass, a solution of dissolved noble metal compound including at least one of the noble metals selected from the group consisting of iridium, rhodium and ruthenium, and particles of at least one filler material selected from the group consisting of MgSiO3, Al2O3, CaSiO3, BaSiO3, PbTiO3 and PbZrO3;

heating said mixture to drive off the volatile materials thereby producing a dry mixture of glass, filler material and finely divided particles of a noble metal alloy;

grinding the dry mixture to a powder; mixing the dry powder with a volatile liquid to form a viscous mixture;

applying a layer of the viscous mixture to a high temperature resistant, electrically non-conductive substrate;

heating the substrate and layer to at least the melting temperature of the glass constituent but less than the melting temperature of the metal alloy to produce a continuous glassy phase having the metal alloy particles and filler material uniformly dispersed therethrough.

The last two steps, with which the dispositive issue is concerned, and all the remaining steps except step one are identical in both counts. A mixture of glass particles, metal alloys, and filler material is heated, ground to a powder, and mixed with a volatile liquid to form a viscous mixture (steps 1-4). This mixture is then applied as a layer to a "high temperature resistant, electrically non-conductive substrate" (step 5). The layer of the viscous mixture and the substrate are heated to a temperature sufficient to melt the glass in the mixture, but insufficient to melt the metal alloys (step 6). The resistance of the electrical resistance element of the count is provided by the metal alloy and filler material dispersed throughout the mixture. The filler material prevents the glass particles from spreading and losing their shape while being heated, a problem referred to in the art as "bleed out."

Proceedings Below

The examiner found that Holmes had adequate support for the claims he copied from Kelly's patent, and an interference was declared.² However, Kelly's motion to dissolve on the ground that Holmes had no right to make the counts with respect to the last two steps was granted by the examiner. After the dissolution of the interference, Holmes's claims were rejected in ex parte proceedings. Holmes filed an affidavit by Vest and Fuller relating to his support for the claims, but the examiner maintained the rejection. Holmes appealed, and the Board of Appeals reversed the rejection stating that "appellants' specification . . provides sufficient antecedent basis for the questioned limitation." The interference was then reinstated. Since Kelly was the junior party and did not, in his preliminary statement, predate Holmes's effective filing date, an order to show good and sufficient cause why judgment should not be rendered against Kelly was issued. In response, Kelly filed a second motion to dissolve similar to his original motion. The board treated this as a request for final hearing on the original motion to dissolve.

The board concluded that Holmes's application does not support the last two steps of the counts and awarded priority to Kelly. It observed that Holmes, the copier, has a "heavy burden to show clear and unambiguous support" for each limitation of the claims and found that all of Holmes's examples relate to self-supporting resistors—not film-type resistors (i. e., those with a film supported by a nonconducting base). It pointed out that, regardless of how "substrate" is defined, Holmes does not disclose applying a layer of viscous mixture to any substrate, since, in his example in which a powder is mixed with a volatile liquid to form a viscous mixture (step 4 of the counts), the viscous mixture is not applied as a "layer" to a substrate. The board noted that the test is not whether the Holmes disclosure might lead a skilled worker to the method of the counts, but whether there is an unequivocal disclosure. The affidavit of Fuller and Vest was not considered because it was not submitted in accordance with 37 CFR 1.271 and 1.272(c). On reconsideration, the board said that Holmes had ample opportunity to file a motion under 37 CFR 1.251(b) to introduce the affidavit and that the interference would not be reopened to introduce evidence known and accessible to a party at a time when the evidence should have been produced.

OPINION

Burden of Proof

The burden of proof on the right to make issue is on the party who has copied the claims. Snitzer v. Etzel, 531 F.2d 1062, 189 USPQ 415 (CCPA 1976). This burden is a heavy one regardless of whether the copier is a junior or senior party (Fontijn v. Okamoto, 518 F.2d 610, 186 USPQ 97 (CCPA 1975)), and doubts must be resolved against the copier. Dreyfus v. Sternau, 357 F.2d 411, 53 CCPA 1050, 149 USPQ 63 (1966). Holmes does not disagree with these propositions, but argues that, since he obtained a favorable decision from the Board of Appeals in the ex parte proceeding³ and since Kelly was under an order to show cause, the burden of proof shifted to Kelly. This argument is without merit. At most, Holmes can argue that the burden of going forward shifted to Kelly, while the burden of persuasion remained with Holmes. In the similar case of Sze v. Bloch, 458 F.2d 137, 59 CCPA 983, 173 USPQ 498 (1972), this court stated that the board was not bound by an ex parte determination of the Board of Appeals on a right to make issue. A decision by the Board of Appeals can, of course, provide a basis for an interference, but it cannot affect the burden of proof in the interference.⁴

Arguably, Kelly had the burden of going forward, since he was under an order to show cause under 37 CFR 1.225, which meant that he had to show good and sufficient cause why judgment should not be rendered against him. However, Kelly responded with his second motion to dissolve. This, if granted, would have been good and sufficient cause for judgment not to be rendered against him.⁵

In view of the foregoing, we are satisfied that at least the burden of persuasion before the board was upon Holmes to show clear and unambiguous support for each limitation of the counts. Rainer v. Unger, 333 F.2d 244, 51 CCPA 1491, 152 USPQ 23 (1964).

Right to Make

Regardless of Holmes's argument that (1) he has adequate support for "substrate" within the meaning of the counts, (2) the counts are not limited to film-type resistors, and (3) the layer is not bonded to the substrate, Holmes does not have support for the limitation—"applying a layer of the viscous mixture to a . . . substrate."⁶ In the example where Holmes makes a viscous mixture, he presses the mixture together into a relatively rigid body with a form of its own. He then places the body in a tunnel kiln on a support (or substrate) for heating. Since the body already has a definite form, the support in the kiln merely serves to keep the body from falling due to the force of gravity. In the counts, the layer is applied to a substrate, indicating that the layer has no form of its own separate from the substrate. We are persuaded that it would unreasonably stretch the meaning of the words of the count...