Mikus v. Wachtel
| Decision Date | 14 November 1974 |
| Docket Number | Patent Appeal No. 74-511. |
| Citation | 504 F.2d 1150 |
| Parties | Felix F. MIKUS and Francis N. Shaffer, Appellants, v. Anselm WACHTEL, Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
James Theodosopoulos, Danvers, Mass., attorney of record, for appellants.
William D. Palmer, Pittsburgh, Pa., attorney of record, for appellee.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to the appellee. We remand for further consideration of the evidence.
The interference involves the application of Mikus et al., serial No. 709,213, filed February 29, 1968, and Wachtel's application serial No. 726,464, filed May 3, 1968. The subject matter at issue embodied in a single count is a composition of matter which finds utility in its property of fluorescence. The emitted light has a narrow range of wavelengths in the blue to blue-green part of the visible spectrum when excited with ultraviolet radiation or cathode rays. Thus, radiation visible to the human eye is produced from that which is invisible.
The sole count of the interference is:
A luminescent composition consisting essentially of a matrix of halophosphate of alkaline-earth metal, wherein the alkaline-earth metal is calcium, barium, and/or strontium, the halogen is chlorine and/or bromine, and an activating proportion of divalent europium.
Both parties, attempting to prove priority of invention by actual reduction to practice, presented documentary evidence and relied on stipulated testimony in the form of affidavits. Also, appellant argues that appellee's reduction to practice of one "species" within the scope of the count was insufficient to support an award of priority to appellee.
On authority of Petisi v. Rennhard, 363 F.2d 903, 53 CCPA 1452 (1966), the board found August 14, 1967, the date of appellee's species reduction, to be its priority date.
The heart of the controversy involves the proofs presented by appellants. Shaffer, Mikus' co-inventor, testified that he prepared certain phosphors within the scope of the count. As supporting evidence, Shaffer referred, inter alia, to certain exhibit which comprised pages from his Technical Notebook. None of the pages bears a witnessing signature but all are signed and dated by Shaffer. The pages fail to appear in precise numerical sequence and many gaps exist between the pages presented. Appellants say the missing pages relate to non-relevant work. Onto certain of the presented pages are stapled reports of tests performed by others on compounds alleged to be within the scope of the count. The tests involved studies of the phosphor's Spectral Energy Distribution and X-ray diffraction. Those studies provide an indication of the quantity of light produced for each wavelength and of the particular crystalline form of the phosphor, respectively.
Appellants argue that the notebook pages and the analytical reports, with the analysts' supporting testimony, adequately corroborate the testimony of Shaffer on reduction to practice of a phosphor within the count. Appellee counters that none of the evidence establishes that the phosphor seen by the analysts contained the recited activator.
The board found that appellants' proofs were insufficient to serve as independent corroboration of the testimony of reduction to practice of the invention. The board concluded that the analysts' testimony did not establish the presence of the specific phosphor activator recited in the count and, therefore, failed to corroborate Shaffer's testimony regarding reduction to practice. Accordingly, the board awarded priority of invention to appellee.
OPINIONWe agree with the board's view respecting appellee's actual reduction to practice of a species within the scope of the count. A prior reduction to practice of the...
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...and "precludes another party from claiming that he is the first inventor of the genus containing the species." Mikes v. Wachtel, 504 F.2d 1150, 1151 (C.C.P.A.1974). Based on this caselaw, the Court finds that the date on which an individual species within a genus is reduced to practice cons......
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Standard Oil Company v. Montedison
...that Phillips must disclose an entire class of products in order to establish priority over a single member. See Mikus v. Wachtel, 504 F.2d 1150 (Cust. & Pat.App.1974); Petisi v. Rennhard, 363 F.2d 903, 53 CCPA 1452 (1966). The Court could decide this priority issue on the law. As discussed......
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Breuer v. DeMarinis, Patent Appeal No. 76-668.
...to practice of the invention defined by the count for purposes of priority in an interference proceeding. Mikus v. Wachtel, 504 F.2d 1150, 183 USPQ 752 (Cust. & Pat.App.1974); Den Beste v. Martin, 252 F.2d 302, 45 CCPA 798, 116 USPQ 584 6 § 1.205 Interference with a patent; copying claims f......
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Oka v. Youssefyeh
...a genus may constitute conception of the genus. Miller v. Walker, 214 USPQ 845, 847 (Bd.Pat.Int.1982); see Mikus v. Wachtel, 504 F.2d 1150, 1151, 183 USPQ 752, 753 (CCPA 1974) (reduction to practice of species established priority to genus). However, as Youssefyeh acknowledges, 2-indanyl co......