James v. Clayton

• Decision Date: 21 June 1937
• Docket Number: Patent Appeal No. 3857.
• Citation: 90 F.2d 337
• Parties: JAMES v. CLAYTON et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

90 F.2d 337 (1937)

JAMES v. CLAYTON et al.

Patent Appeal No. 3857.

Court of Customs and Patent Appeals.

June 21, 1937.

Kenyon & Kenyon, of Washington, D. C. (Drury W. Cooper, of New York City, Maurice A. Crews, of Philadelphia, Pa., H. Frank Wiegand, of New York City, and Lee B. Kemon, of Washington, D. C., of counsel), for appellant.

Charles M. Thomas, of Washington, D. C. (Ford W. Harris, of Los Angeles, Cal., of counsel), for appellees.

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

HATFIELD, Associate Judge.

This is an appeal in an interference proceeding from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority of invention to appellees.

The interference involves the application of Benjamin Clayton, Walter B. Kerrick, and Henry M. Stadt, Serial No. 534,533, filed May 2, 1931, and an application of Edward M. James, Serial No. 567,220, filed October 6, 1931.

The invention in issue relates to a process for the purification of vegetable and animal oils, and is sufficiently described in the counts in issue. Of the three counts in issue, Nos. 1, 2, and 3, Nos. 1 and 3 are illustrative. They read:

"1. In the purification of vegetable and animal oils containing free fatty acid, a continuous process comprising intimately mixing a measured quantity of oil with a measured quantity of alkali for a period of less than five minutes, thereafter passing the mixture continuously through a heated conduit to raise its temperature to a degree which will facilitate centrifugal separation and then promptly centrifugally separating the refined oil from the resulting sludge and residual solution."

"3. A process for the purification of vegetable and animal oil containing free fatty acid, comprising continuously feeding in measured quantities separate streams of said oil and an alkali to a mixing zone, continuously advancing said oil and alkali to a mixing zone, continuously advancing said oil and alkali while in intimate physical contact through said mixing zone to effect a thorough admixture thereof, in passing the mixture discharging from the mixing zone as a continuously advancing stream restricted in cross section through a continuous elongated passageway, in raising the temperature of the mixture during its passage through said elongated passageway to a degree sufficient to facilitate its subsequent centrifugal separation, and in subjecting the mixture discharging from said passageway to centrifugal separation to separate the refined oil from resulting sludge and residual solution."

Counts 1 and 2 originated in appellant's application. The claim constituting count 3 was added to the interference on motion of appellees under rule 109 of the Rules of Practice in the United States Patent Office.

Counsel for appellant moved to dissolve the interference as to counts 1 and 2 on the ground that appellees were not entitled to make them; opposed the addition of the claim constituting count 3 on the same ground; and moved to shift the burden of proof, claiming that a prior application of appellant, Serial No. 517,112, filed February 19, 1931, disclosed the invention in issue.

The Examiner of Interferences denied appellant's motion to dissolve and his motion to shift the burden of proof, and granted appellees' motion to add count 3.

In denying appellant's motion to shift the burden of proof, the Examiner of Interferences said that there was no statement in appellant's application, Serial No. 517,112, "as to the length of time of mixing, nor as to the nature of the means in which heating takes place, nor as to whether centrifuging is to take place promptly, with respect to all of which the counts contain limitations."

In affirming the examiner's decision as to that issue, the Board of Appeals stated:

"Appellant urges the James application Serial No. 517,112, filed February 19, 1931, presents as good a disclosure of the invention expressed in the interference counts as will be found in the Clayton application. The James earlier application emphasizes a special reagent for the purification of fatty oils, namely, an aqueous solution of a poly-sodium phosphate. The specification is very general as to the procedure of mixing the oil and alkali and seems to state that the process may be employed in continuous or batch operation. In this interference we are concerned with an improvement in a continuous process.

"The Examiner in considering the question of shifting the burden of proof properly stated that certain steps in the process as defined in the issues are not disclosed in the very general statements of the earlier James application. This application states nothing of an intimate mixture for a brief period and then passing through a heated conduit and promptly into a centrifuge. This application does not describe particularly a quick purification of the oil by a continuous operation. We are satisfied the Examiner's decision as to this earlier James application is warranted."

The only claim made here by counsel for appellant is that if appellees' application discloses the invention defined by the appealed counts, appellant's application, Serial No. 517,112, also discloses it.

We are in entire agreement with the tribunals of the Patent Office that that application of appellant does not disclose the invention defined by the appealed counts.

In his decision of October 10, 1935, the Examiner of Interferences, after a careful consideration of the evidence in the case and the applications of the parties, concluded that appellant was entitled to a date as early as May 14, 1930, for conception of the invention; that, due to the views he held, it was unnecessary to determine whether appellees conceived the invention prior to their filing date, May 2, 1931; that weekly reports made by appellant to the Sharples Specialty Company, his employer and assignee, on a series of experimental tests conducted by him on an apparatus (Appellant's Exhibit No. 1) from April to August 9, 1930, established that he failed to reduce the invention to practice during that period; that, although appellant was the first to conceive the invention, he was the last to reduce it to practice; and that, as he was lacking in diligence during the critical period, that is, from immediately prior to May 2, 1931, the filing date of appellees' application, and thereafter, until he filed his application, October 6, 1931, appellees were entitled to an award of priority of the invention, provided they could make the counts in issue.

With reference to the right of appellees to make the involved counts, the Examiner of Interferences referred to the evidence of record and appellees' specification, and held that appellees were entitled to make the counts in issue, and, accordingly, awarded priority of invention to them.

In its decision, the Board of Appeals discussed at considerable length the evidence relative to appellant's activities in his attempt to reduce the invention to practice, then, after quoting from some of the reports made by appellant as to his progress in his experimental work, among other things, said: "In considering an improvement in a method of purifying cottonseed oil, the results might be satisfactory in certain respects and not in others and it could hardly be said that such experiments were so satisfactory as to present a reduction to practice especially if the experimenter himself indicated dissatisfaction. This is especially true as it may be uncertain as to the actual results desired. Appellant urges he was seeking especially good results and that the results obtained in his experiments were satisfactory to a certain extent. This is questionable though James, in some experiments, carried out the individual steps of the process as called for by the counts. If the results were evidently unsatisfactory to the operator, how can it be said that such results are a satisfactory reduction to practice? What if James actually carried out the individual steps of the process as defined in the issues of the interference and got no particular results, could it be said that he reduced to practice under such conditions? We believe the examiner's position as to James' reduction to practice is warranted as the last experiments were seemingly much the same as to results as the first, and the final report indicated these tests would be continued at some future time. Furthermore, it must be remembered such tests were made in an experimental apparatus * * *."

— and, accordingly, affirmed the holding of the Examiner of Interferences that appellant had not reduced the invention to practice prior to his filing date, and that he was not diligent from immediately prior to the filing of appellees' application, May 2, 1931, and thereafter, until he filed his application, October 6, 1931.

With reference to the right of appellees to make the counts in issue, the board quoted the following from appellees' specification: "It is obvious, however, if the alkali is introduced closer to the oil supply A, which may be remote from the heater 3, premixing with the oil will take place in the pipe A' before reaching the heater 3 and step two," then said:

"Appellant urges vigorously there is no statement of intimate mixing of the alkali with the oil before entry of the mixture into the heater and that all the reaction takes place in the heater coil. He points to a statement in line 18, page 6, that the reagent pumped into the line A' `in measured quantity enters the oil in filamentary form and performs its previously described reactions during step two.' Appellant notes also that in the testimony of various witnesses for Clayton et al, it is stated the reactions take place in the heating coil and no special emphasis laid on any special mixing of the oil and the alkali before passing into the heater.

"Appellee, on the other hand, submits...