In re Jolley

• Decision Date: 29 October 2002
• Docket Number: No. 01-1646.,01-1646.
• Citation: 308 F.3d 1317
• Parties: In re Scott T. JOLLEY.
• Court: U.S. Court of Appeals — Federal Circuit

308 F.3d 1317

In re Scott T. JOLLEY.

No. 01-1646.

United States Court of Appeals, Federal Circuit.

DECIDED: October 29, 2002.

Donald Edward Scott, Bartlit Beck Herman Palenchar & Scott, of Denver, Colorado, argued for appellant. With him on the brief was Jason L. Peltz, of Chicago, Illinois. Of counsel on the brief was Susan J. Mack, Sughrue Mion Zinn Macpeak & Seas, P.L.L.C., of Washington, DC. Of counsel were Mary Szews Moore, Bartlit Beck Herman Palenchar & Scott, of Chicago, Illinois; and Thomas J. Macpeak, Sughrue Mion Zinn Macpeak & Seas, P.L.L.C., of Washington, DC.

Stephen Walsh, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With him on the brief were John M. Whealan, Solicitor; Linda Moncys Isacson, Associate Solicitor; and Mark Nagumo, Associate Solicitor.

Before MICHEL, CLEVENGER, and BRYSON, Circuit Judges.

CLEVENGER, Circuit Judge.

Scott T. Jolley appeals the decision of the Patent and Trademark Office Board of Patent Appeals and Interferences granting priority of invention to Phillip W. McGraw, Eldon L. Ward, and Michael W. Edens ("McGraw") on the basis of an earlier conception and diligence toward a later reduction to practice in combined Interferences 103,525 and 103,526. We find the Board's factual determinations supported by substantial evidence and its legal conclusions sound, and we consequently affirm the Board's award of priority to McGraw.

BACKGROUND

This interference arises ultimately from the realization that refrigerants containing chlorine (chlorofluorocarbon ("CFC") refrigerants, often known as Freons) destroy atmospheric ozone when ultraviolet radiation in the upper atmosphere breaks off chlorine from the CFC molecule. This discovery, and the 1987 Montreal Protocol restricting the use and production of widely used CFC refrigerants such as R12 and R22, prompted a search for chlorine-free refrigerants that had thermodynamic properties comparable to those of CFCs but would not pose a threat to the Earth's protective ozone layer. The compound R134a (CF₃CH₂F) was quickly identified as the only feasible "drop-in" replacement for the commonly used CFC R12, due to its similar thermodynamic properties chemical stability, and low toxicity. R134a is known as a hydrofluorocarbon, or HFC, because it contains fluorine but no chlorine.

The switch from CFC to HFC refrigerants, however, also required another technological advance: the development of new lubricants for HFC-based cooling systems. Mechanical pumps circulate the refrigerant in most refrigeration systems, and such pumps require lubrication. Refrigeration systems usually employ a lubricant mixed in with the circulating refrigerant, and such an arrangement poses special challenges for lubricants. Reliable lubrication is essential in a closed system that must run for long periods of time without maintenance. Furthermore, because the refrigerant cycles between hot and cold temperatures during operation, an effective lubricant must be soluble in the refrigerant throughout the range of operating temperatures, i.e. the two components should exist as a single liquid or gaseous phase, without separating, at all operating temperatures. Conventional lubricants (such as mineral oils) were known to be poorly soluble in R134a at the required operating temperatures, and several companies during the late 1980s sought to develop a lubricant composition that would be compatible with R134a. Among these companies were the Lubrizol Corporation, assignee of appellant Jolley, and the Dow Chemical Company, assignee of absent interference party McGraw.

Proximately, this appeal arrives by way of a five-way interference proceeding held to determine priority of invention for a particular ester lubricant composition compatible with chlorine-free HFC refrigerants. Only two parties are pertinent here: senior party Jolley, who was accorded the benefit of his application 07/608,600, filed April 25, 1989, and junior party McGraw, who was accorded the benefit of the application that matured into issued U.S. Patent 4,959,169, filed October 20, 1989. The consolidated interference count was defined in the alternative by reference to various claims of the applications or patents of the five involved parties. All of the relevant claims correspond to the single interference count, and claim 1 of Jolley's application illustrates the subject matter to which the evidence of priority has been directed:

1. A liquid composition comprising:

(A) at least one fluorine-containing hydrocarbon containing 1 or 2 carbon atoms,

further wherein fluorine is the only halogen in said fluorine-containing hydrocarbon;

and

(B) an effective amount of at least one soluble organic lubricant comprising at least one carboxylic ester of a carboxylic acid and a polyhydroxy compound characterized by the general formula

R[OC(O)R¹]_n (I)

wherein R is a hydrocarbyl group, each R¹ is independently hydrogen, a straight chain lower hydrocarbyl group, or a branched chain hydrocarbyl group, and n is at least 2.

Component (A) in this incarnation of the count defines an HFC refrigerant such as R134a. Component (B) (the lubricant) is an ester, which is an organic compound typically formed by reacting alcohols and carboxylic acids. The esters of component (B) are esters of polyhydric alcohols, which is to say that multiple carboxylic acid moieties are attached to a single organic backbone. For example, esters of pentaerythritol, a tetrahydroxy alcohol, are polyhydric ester alcohols. Jolley's specification further defines the carboxylic acid portion of the ester (the "hydrocarbyl group" of R¹) as being up to seven carbon atoms in length.

Jolley established conception of this invention no earlier than June 2, 1988. The Board, however, awarded priority to McGraw, based on an alleged May 20, 1988, prior conception, coupled with diligence extending to a reduction to practice in September or October of 1988. The Board further found that Jolley's claims were unpatentable as anticipated by an earlier patent disclosing ester lubricants for CFC refrigerants, U.S. Patent No. 2,807,155 to Williamitis, and in light of this determination did not reach the further question of whether Jolley's claims were obvious in light of the prior art.

Jolley is the only party appealing the Board's decision. Jolley contests the Board's (1) conclusion that McGraw's evidence suffices to show conception of the subject matter of the count, (2) its determination that McGraw's inventive activity during the critical time period should be credited toward reduction to practice of the invention as conceived, and (3) its determination that the Williamitis patent provides a complete and enabling disclosure of subject matter encompassed by Jolley's claims. McGraw, whose issued '169 patent was awarded priority in the interference, did not respond to Jolley's opening brief, nor did any of the other junior parties in the interference.¹ We subsequently granted the motion of the Director to participate in the appeal to defend the Board's decision, and to recaption the appeal In re Jolley.

I

Whether a party to an interference has demonstrated conception of the invention of the count is a legal conclusion, based on subsidiary factual findings. Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed.Cir.1998). We review the Board's legal conclusions without deference, but we must affirm its factual findings if they are supported by substantial evidence. Hitzeman v. Rutter, 243 F.3d 1345, 1353, 58 USPQ2d 1161, 1166-67 (Fed.Cir.2001). Substantial evidence "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Our review of factual findings for substantial evidence examines the record as a whole, taking into account evidence that supports the Board's position as well as that evidence detracting from the Board's conclusion. In re Gartside, 203 F.3d 1305, 1312, 53 USPQ2d 1769, 1773 (Fed.Cir.2000). Significant to resolution of the instant case, "the possibility of drawing two inconsistent conclusions from the evidence" will not render the Board's findings unsupported by substantial evidence. See Consolo v. Fed. Mar. Comm'n, 383 U.S. 607, 620, 86 S.Ct. 1018, 16 L.Ed.2d 131 (1966). If the evidence in record will support several reasonable but contradictory conclusions, we will not find the Board's decision unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative.

The count is directed to a "two-component" composition: an HFC refrigerant and an ester lubricant. McGraw's initial conception was not of a pure ester lubricant as defined by the count, but rather a lubricant mixture including both an ester and a separate polyhydric alcohol component. Because the count is "open," i.e., its "comprising" language permits additional ingredients (such as a polyhydric alcohol lubricant) to be present in the composition defined by the count's limitations, the Board concluded that McGraw could claim the benefit of its documented conception of and diligence toward a "three-component" system: a refrigerant, an ester, and a polyhydric alcohol (also called a polyol or polyglycol). This work also led to noninvolved patent 4,851,144, a narrower patent which explicitly claims ester/polyol lubricant blends.

Before the Board, Jolley had argued that McGraw's conception of a separately patentable invention could not also establish conception of the subject matter of the interference count. However, on appeal, Jolley relies more heavily on the argument that McGraw's evidence was on its face too generalized to serve as a conception of the subject matter of the count. As McGraw's conception was not limited to the esters of the count, but...