Kistler v. Weber

• Citation: 412 F.2d 280,162 USPQ 214
• Decision Date: 18 September 1969
• Docket Number: Patent Appeal No. 8169.
• Parties: Samuel S. KISTLER, Appellant, v. Neill WEBER, Appellee.
• Court: United States Court of Customs and Patent Appeals

162 USPQ 214, 412 F.2d 280 (1969)

Samuel S. KISTLER, Appellant, v. Neill WEBER, Appellee.

Patent Appeal No. 8169.

United States Court of Customs and Patent Appeals.

June 26, 1969.

Rehearing Denied September 18, 1969.

Stowell & Stowell, Washington, D. C., attorneys of record, for appellant. Harold T. Stowell, Albert Tockman, A. Donald Messenheimer, Washington, D. C., of counsel.

Chisholm & Spencer, Pittsburgh, Pa., for appellee. Oscar L. Spencer, William S. Britt, Pittsburgh, Pa., Conrad Christel, Buffalo, N. Y., George R. Jones, Arlington, Va., of counsel.

Before RICH, Acting Chief Judge, HOLTZOFF and McLAUGHLIN, Judges, sitting by designation, and ALMOND and BALDWIN, Judges.

RICH, Acting Chief Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority to Weber in interference No. 95,538, involving Weber patent No. 3,218,220, for "Strengthened Glass Article And Method Of Producing Same," issued November 16, 1965, on application serial No. 412,658, filed November 20, 1964, and Kistler application serial No. 435,683, filed February 26, 1965, for "Treatment of Glass."

The Invention of the Count

The invention is a method of tempering or strengthening soda glass which involves contacting the glass with a molten potassium salt at a temperature below the strain point of the glass to effect replacement of sodium ions present in the surface layer of the glass with potassium ions from the salt. The replacement can be effected by ordinary diffusion or by diffusion biased by an electrical field.

Because potassium ions are much larger than sodium ions, the replacement of the latter with the former causes a compressive stress in the surface layer and a concomitant, over-all strengthening of the glass. The single count in interference, claim 5 of the Weber patent, reads:

1. A method of tempering soda glass comprising replacing sodium ions in a surface layer of the glass by potassium ions by contacting the glass with a molten potassium salt while retaining the glass below the strain temperature thereof to place the surface in compression. Emphasis ours.

Proceedings Below

Weber filed his first application, serial No. 13,777, on March 9, 1960, and a continuation-in-part ("c.i.p.") thereof on November 20, 1964. On November 16, 1965, the c.i.p. issued as the Weber patent involved here.

Kistler filed his first application, serial No. 69,251, on November 15, 1960 (about eight months after the filing of the Weber parent application) and filed the instant c.i.p. on February 26, 1965. Claims copied from the Weber patent were added to the c.i.p. on March 9, 1966 (about four months after the patent issued), for the purpose of provoking this interference.¹ Kistler took the position that Weber was not entitled to the benefit of the filing date of his parent application (for reasons discussed hereinafter), that his (Kistler's) effective filing date was therefore senior to that of Weber so that no showing under Rule 204(c)² was required of him (Kistler). Notwithstanding Kistler's position with respect to the necessity of his doing so, he submitted "a showing considered to meet the requirements of Rule 204 * * * in order to expedite declaration of the interference."

Although the examiner initially held that an adequate showing under Rule 204(c) had not been made,³ the application was eventually forwarded to the board, and this interference was declared.

The declaration of interference accorded each party the benefit of the filing date of his parent application; as a result, Weber was made senior party. Mailed with the declaration of interference was an Order to Show Cause listing deficiencies that the board found in Kistler's Rule 204(c) showing and indicating that unless Kistler showed cause why such action should not be taken, summary judgment would be entered against him, all in accordance with Rule 228.⁴ Kistler filed a response to the show cause order (as permitted by Rule 228) together with an amplified affidavit of Kistler. In the response, Kistler again challenged Weber's entitlement to the filing date of his parent application and Weber's senior party status, and maintained that his amplified Rule 204(c) showing was sufficient prima facie to entitle him to an award of priority relative to the filing date of Weber's parent application. As permitted by Rule 228, Weber presented his views on both of Kistler's contentions. An oral hearing on the Order to Show Cause was had before the board, and its decision granting summary judgment against Kistler is the subject of this appeal.

Weber's Right to Rely on His Parent Application

The arguments with respect to Weber's right to rely on the filing date of his parent application revolve about the following two sentences therein:

The rate of exchange of potassium ions for sodium ions by ordinary diffusion at temperatures below the strain point of the soda glass, such as takes place when a soda glass article is immersed in a molten potassium salt is impractically slow. On the other hand, it has been found that the rate of migration of potassium ions into the soda glass can be vastly increased if the diffusion is biased by an electric field in the proper direction. Emphasis ours.

Kistler argues that this disclosure teaches that the exchange of potassium ions for sodium ions in the absence of an electrical field is "inoperative" and "lacks utility" and from this argues that:

Weber cannot now retreat from his earlier admission against interest and rely on the negative disclosure of his 1960 application as supporting the subject matter of the count or as constituting constructive reduction to practice of the invention of the count.

Weber replies as follows:

By stating that ion diffusion unaided by current was "impractically slow", Weber was saying, in effect, that the preferred manner of carrying out the invention was with a molten salt in the presence of an imposed electrical field.

* * * * * *

* * * Weber cautions that diffusion alone may be quite slow, but does not state that strengthening will not take place in the absence of applied current. The import of Weber\'s statement is only that in preferring use of electrical fields, Weber can hasten the desired exchange at the relatively low temperatures required to remain below the strain point.

Holding for appellee, the board had this to say:

Kistler argues, on the basis of this statement, that Weber considered his process inoperative except as biased by an electric field, and that Weber was therefore not entitled in that application to make a claim broad enough to include exchange "by ordinary diffusion." In considering this argument we have noted:

1. That there is no difference between the 1960 and 1964 applications in regard to the sentence in question, and that Kistler\'s attack is hence, in effect, an attack upon Weber\'s right to make the count in his patent.

2. That the count language is readable, word for word, on the Weber 1960 application (Compare Kyrides v. Andersen, 28 CCPA 1336 121 F.2d 514, 50 USPQ 131, 1941 C.D. 720).

3. That Weber considered, as reflected in claim 1 of his 1960 application,⁵ that his invention included both electrolytic and non-electrolytic processes.

We therefore disagree with Kistler\'s position, and we have no doubt that Weber\'s 1960 application supports * * * the present * * * count and we so hold. Emphasis ours.

After careful consideration of all the arguments raised on this issue, we do not share appellant's view as to what the disclosure in question would teach one of ordinary skill in the art. It unquestionably teaches both embodiments of the process of the count and, in our opinion, does not teach that the process of the count is, in the sense of the patent law, either inoperative or lacking in utility when carried out in the absence of an electrical field. Important property rights should not depend merely on a felicitous choice of words. We therefore agree with the board that Weber's parent application supports the count and that Weber is entitled to the benefit of its filing date.

Adequacy of Kistler's Rule 204(c) Showing

At the outset, we will consider Kistler's contention that the board applied too strict a standard in judging whether he has made a prima facie case of priority. Citing Peters v. Hopkins, 34 App.D.C. 141, 1910 C.D. 278 (1909), Kistler contends that he is entitled to a "full hearing on priority" if his Rule 204(c) showing "gives rise to any reasonable inference that he can establish priority." In Peters, decided under old Rule 114,⁶ junior party Peters had filed a Preliminary Statement alleging conception of the invention in issue on January 1, 1904, eight days prior to the filing date of senior party Dement.⁷ Because Peters did not also allege a disclosure to another prior to Dement's filing date, the Examiner of Interferences entered summary judgment against him. An appeal was taken by Peters to the Commissioner, who affirmed the decision, saying (as quoted in the court's opinion):

Experience has shown that it is only in rare cases, if ever, that conception is proved except by disclosure to others, either orally or by means of some tangible evidence; and it is believed, therefore, that in those cases where a junior party alleges the fact of conception only, prior to the filing date of the senior party, the better practice is to issue an order to show cause against the junior party. If the case is one of those conceivable, but exceedingly rare, cases, where conception can be established by means other than disclosure, and the party against whom the order to show cause has been issued shall, within the time set therein, file the affidavit of himself or of his attorney, setting forth that it is proposed to establish conception by means other than disclosure, the Examiner of Interferences will not render a judgment, but will set times for taking testimony. This practice will work no hardship upon the junior party, for the rule

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