Kroekel v. Shah

• Decision Date: 21 July 1977
• Docket Number: Patent Appeal No. 76-723.
• Citation: 558 F.2d 29
• Parties: Charles H. KROEKEL, Appellant, v. Navin SHAH, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

558 F.2d 29

Charles H. KROEKEL, Appellant, v. Navin SHAH, Appellee.

Patent Appeal No. 76-723.

United States Court of Customs and Patent Appeals.

July 21, 1977.

Michael B. Fein, Philadelphia, Pa., attorney of record, for appellant.

Elton Fisher, Columbia, Md., attorney of record, for appellee.

Before MARKEY, Chief Judge, RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

Senior party Kroekel appeals from the decision of the Patent and Trademark Office Board of Patent Interferences (board) in interference No. 98,607 awarding priority of invention to junior party Shah on the ground that Kroekel had no right to make the counts. We reverse.

This interference involves application serial No. 335,999,¹ entitled "Unsaturated Polyester Resins Containing Cellulose Ester and Molded Articles Therefrom," filed February 26, 1973, for reissue of Kroekel U.S. patent No. 3,642,672, which issued from application serial No. 878,920,² filed November 21, 1969, which in turn was based upon application serial No. 566,580, filed July 20, 1966, now U.S. patent No. 3,701,748; and Shah U.S. patent No. 3,711,432³ which issued from application serial No. 120,229, filed March 2, 1971, entitled "Low Shrink Polyester System Formed of a Mixture of Unsaturated Polyester Resin, Monomeric Copolymerizable Component and Cellulose Organic Ester." Kroekel was declared senior party, having been accorded the benefit of the filing date of application serial No. 566,580, filed more than 55 months prior to Shah's application.

The Subject Matter

Ten phantom counts are involved. The subject matter of the counts comprises (1) a homogeneous polyester resin system, (2) a cured product made from that system, and (3) a method for preparing the resin system. Counts 1, 3, 6, and 7 are illustrative:

1. A homogeneous polyester resin system which comprises per 100 parts by weight about 1 to 25 parts by weight of a cellulose organic ester selected from the group consisting of cellulose propionate, cellulose acetate propionate, and cellulose acetate butyrate; from about 25 to about 75 parts by weight of a monomeric copolymerizable component containing a CH2 = C group; and from about 20 to about 70 parts by weight of an unsaturated polyester resin component, said unsaturated polyester resin being the condensation product obtained by polycondensation of a,B-unsaturated dicarboxylic acid and/or anhydrides together with polyhydric alcohol.

3. The resin system of count 1 having therein an effective amount of a polymerization initiator whereby upon curing of the resinous system, surfaces are characterized as smooth, free of ripple and shrink marks, with excellent adhesion to paints.

6. A cured product cured by exposing the resin system of count 1 to a temperature from about 212 F. to about 350 F. and pressure in the range of from 100 to 1,500 psi.

7. A method for preparation of a homogeneous polyester resin system which comprises mixing together per 100 parts by weight about 1 to about 25 parts by weight of a cellulose organic ester selected from the group consisting of cellulose propionate, cellulose acetate butyrate; which is added with agitation to about 25 to about 75 parts by weight of a monomeric copolymerizable component containing a CH-C sic, CH2 = C group: occluded in the system, and thereafter, adding from about 20 to about 70 parts by weight of unsaturated polyester resin solutions, the unsaturated polyester resin being the condensation product obtained by polycondensation of a,B-unsaturated dicarvoxylic sic acid and/or anhydrides together with polyhydric alcohol.

The Board

The board found the counts ambiguous, and consulted the disclosure of the Shah patent, where the count language originated, to resolve that ambiguity. It said:

When the counts are interpreted in light of the Shah patent, we are left with the definite conviction that the subject matter of the counts deals with polyester resin systems which, when cured, yield a product which is characterized by a homogeneous configuration. * * *

* * * The language "homogeneous" limits the scope of the polyester resin systems of the counts to those resin systems which upon curing must yield homogeneous configurations.

The board found that Kroekel's disclosure was limited to cured products with heterogeneous configurations and, because he had not borne his burden of showing otherwise, that he had no right to make the counts.

Issue

The sole issue is whether Kroekel has a right to make the counts, the determination of which turns on whether the counts are limited to resin systems which result in products that are homogeneous when cured.⁴

OPINION

Determination of the existence of an ambiguity requires consideration of both the language of counts and the reasonableness of arguments indicating that the language of the counts has different meanings. Stansbury v. Bond, 482 F.2d 968, 179 USPQ 88 (CCPA 1973). The board, having concluded that ambiguity is not apparent from the count language, considered the arguments of the parties, which it summarized:

Kroekel maintains that the counts do not cover "cured" products.⁵ According to Kroekel, since both parties use the same components to make their respective uncured products, the parties are claiming the same invention, i. e., an uncured product comprising (1) a polyester resin, (2) a polymerizable monomer, and (3) a cellulose ester polymer.

Shah maintains, on the other hand, that his claims, and hence the counts, covers sic:

(1)

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