In re Perrin

• Decision Date: 04 April 1944
• Docket Number: Patent Appeal No. 4874.
• Citation: 142 F.2d 277
• Parties: In re PERRIN.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

142 F.2d 277 (1944)

In re PERRIN.

Patent Appeal No. 4874.

Court of Customs and Patent Appeals.

April 4, 1944.

Ralph F. Miller, of Washington, D. C. (C. H. Biesterfeld, of Washington, D. C., of counsel), for appellant.

W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.

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

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the Primary Examiner rejecting all of the claims of appellant's application for a patent, on the ground of lack of invention over the prior cited art.

Appellant's application was filed on May 4, 1940, and recites that it is "a continuation-in-part of application Serial No. 138,266 filed April 21, 1936, jointly by me, J. G. Paton and E. G. Williams." A patent, No. 2,219,700, was issued on said joint application on October 29, 1940.

Appellant's instant application discloses and claims insulated electric conductors in which the conducting element is insulated by use of a solid polymer of ethylene.

Claim 1 is illustrative and reads as follows:

"1. An insulated electrical conductor the insulating material of which comprises a polymer of ethylene which is solid at normal temperatures and which corresponds in composition substantially to (CH2) x."

The references cited are:

Rohm et al., 1,982,831, December 4, 1934.

British Patent, 471,590, September 6, 1937.

Hall et al., 2,169,097, August 8, 1939.

Schupp et al., 2,177,266, October 24, 1939.

The cited British patent in which appellant is named as one of the joint inventors discloses the polymer of ethylene claimed in the instant case, and states they have "good dielectric properties and may be used for electrical insulation in general."

While appellant's instant application was filed on May 4, 1940, it is his contention that he is entitled to the benefit of the date of the joint application hereinbefore referred to, viz., April 21, 1936. If he is correct in this contention, said British patent could not be considered as prior art and hence not available as a reference. The same is true of the references Schupp et al. and Hall et al., for both patents were issued subsequent to the filing date of the joint application above referred to.

The patent to Rohm et al. discloses the use of a resin consisting of a polymerized ester of acrylic acid as the insulating medium in an electrical conductor.

The examiner finally rejected all of the claims upon the ground that they define an old combination in view of the references. He also rejected them as being unpatentable over the British patent alone. He further held that appellant's application, being a sole application stated to be a "continuation-in-part" of said joint application, was not entitled to the benefit of the date of the joint application, and that all of the patents cited were valid references. He further held that even if a continuation-in-part sole application may under any circumstances relate back to a joint application, this could not be done in the instant case without a disclaimer of the subject matter by the other joint applicants. Thereupon, appellant filed a request for reconsideration together with an affidavit made by Williams, one of the joint applicants. This affidavit reads as follows:

"I, Edmond George Williams, being duly sworn, depose and say that I am one of the three inventors named in U. S. patent 2,219,700 (issued in the name of John Greeves Paton, Michael Wilcox Perrin and Edmond George Williams) which claims films of ethylene polymer and which resulted from application Serial No. 138,266 filed April 21, 1937.

"I further depose and say that I am not the inventor of the improved electrical conductors insulated with ethylene polymer which were disclosed in application Serial No. 138,266 and which are now claimed after requirement for division by the Patent Office in the above entitled sole application Serial No. 333,441 with which I am familiar and which was filed by Michael Wilcox Perrin with whom I had previously filed jointly the above mentioned application Serial No. 138,266.

"I further depose and say in verification of the above mentioned facts with regard to inventorship that whereas I was named with said Michael Wilcox Perrin in the British application 12202 filed April 29, 1936 describing the films, a separate sole British application 12203 describing application of the polymer in insulation was filed in the name of said Michael Wilcox Perrin, both of said British applications being acknowledged in said earlier joint U. S. application Serial No. 138,266 and in the above entitled sole application Serial No. 333,441.

"I further depose and say that John Greeves Paton, who in addition to said Perrin and myself was one of the inventors named in said patent, has been reported missing by the naval authorities.

"I further depose and say that insofar as I am aware there is no reason to believe that the said Paton, if available, would not submit an affidavit alleging the same facts given herein.

"Edmond George Williams."

Appellant's British application 12203 and the British joint application 12202, referred to in the affidavit, appear in the record.

In appellant's British sole application it is stated that the invention relates to means for the electrical insulation of materials by means of polymers of ethylene produced according to the methods described in certain applications which later formed a part of the subject matter of the cited British patent.

Said sole application further states:

"The invention may take many and varied practical forms. These are based on the fact that, in bulk form, the solid polymers of ethylene have been found to possess a high electrical resistance, a low power factor and a high breakdown voltage." (Italics ours.)

The British joint application 12202, made by appellant, Paton, and Williams, relates to films and their manufacture, employing polymers of ethylene, produced by the methods described in the applications referred to in the sole application 12203.

This joint application states:

"The films prepared according to this invention are extremely impermeable to water or water vapour and resistant to many chemicals. Thus, the rate of diffusion of water vapour through an ethylene polymer film is of the order of 80 times lower than through a viscous film of similar thickness. The films have also excellent electrical insulating properties, thus a high electrical resistance, a low power factor and a high breakdown voltage.

"These films have many uses, including their use for wrapping and protective purposes in general."

The examiner declined to reopen the case for further prosecution, but in his "Statement" on appeal he stated that even if it should be held that a sole application may be a continuation-in-part of a joint application, there must be disclaimers of the invention involved in the sole application made by all of the other joint applicants of the parent application; that one of the joint applicants, Paton, had not made such disclaimer, and that there is no proof that he will never be in a position to express his view upon the subject.

The Board of Appeals, in its original decision, affirmed the decision of the examiner upon all of the grounds stated by him. It stated that while a sole application may be entitled to be regarded as a division of a joint application, under the principle declared in the case of In re Roberts, 49 App.D.C. 250, 263 F. 646, it did not feel warranted in extending the principle to continuations-in-part. It also referred to the fact that disclaimers had not been filed in the instant case by all of the joint applicants in the earlier case.

Appellant filed two petitions for reconsideration of the board's decision, and in connection therewith filed an affidavit by the secretary of the assignee of both the instant application and the joint application. Said affidavit reads as follows:

"I, John Egbert James, being duly sworn, depose and say that I am the Secretary of the Imperial Chemical Industries Limited, referred to hereinafter as I.C.I.

"I further depose and say that I.C.I. is the assignee of application Serial No. 136,266 (U. S. Patent 2,219,700) which was filed April 21, 1937 jointly by Michael W. Perrin, John G. Paton and Edmond G. Williams and of which the above entitled application by said party Perrin, also assigned to said assignee, is a continuation-in-part wherein the common subject matter is the electrically insulated conductor claimed in the above entitled application and claimed in the corresponding British Patent 12203/36 filed April 29, 1936 in the name of said Perrin by said assignee.

"I further depose and say with regard to the subject matter disclosed in said joint application 138,266 of Perrin, Paton and Williams (all of said parties being employees of said assignee at the time of their inventions) that the records of the assignee show that the electrically insulated conductors disclosed but not claimed in said joint application constitute the invention only of said Perrin for which said British application 12203/36 was filed in the name of Perrin by said assignee, and that said Paton and Williams were the inventors only of the subject matter claimed in said U. S. joint application for which a British application 12202/36 was also filed April 29, 1936 in the name of Paton and Williams by said assignee.

"I further depose and say that this affidavit is being made by the assignee instead of by the party Paton because said party Paton has been reported missing by the naval authorities.

"John Egbert James."

The board declined to consider this affidavit, and stated: "The petition is denied with respect to any change in decision."

Thereupon, appellant petitioned the commissioner that jurisdiction be restored to the ...