Mikus v. Wachtel, Patent Appeal No. 76-594.

• Decision Date: 28 October 1976
• Docket Number: Patent Appeal No. 76-594.
• Citation: 542 F.2d 1157
• Parties: Felix F. MIKUS and Francis N. Shaffer, Appellants, v. Anselm WACHTEL, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

542 F.2d 1157

Felix F. MIKUS and Francis N. Shaffer, Appellants, v. Anselm WACHTEL, Appellee.

Patent Appeal No. 76-594.

United States Court of Customs and Patent Appeals.

October 28, 1976.

James Theodosopoulos, Ipswich, 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.

MARKEY, Chief Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to Wachtel. We affirm.

This appeal follows from a remand to the board¹ to consider appellants' (Mikus') Exhibit BH, a "Record of Invention," in light of our opinion in Blicharz v. Hays, 496 F.2d 603 (Cust. & Pat.App.1974).

Upon remand, the board majority adhered to its award of priority to Wachtel, finding that the "Record of Invention," inter alia, failed to provide Mikus with corroboration of reduction to practice.

The interference involves the application of Mikus et al. serial No. 709,213, filed February 29, 1968, entitled "Divalent Europium Activated Alkaline Earth Halophosphate Phosphor" and the application of Wachtel, serial No. 726,464, filed May 3, 1968, entitled "Alkaline-Earth Metal Halophosphate Luminescent Composition Activated by Divalent Europium." The subject matter at issue, embodied in a single count, is a phosphor composition which finds utility in its property of fluorescence. When excited with ultraviolet or cathode ray radiation, the phosphor emits light having a range of wavelengths in the blue area of the visible spectrum.

The sole count reads:

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.

Priority Proofs and Board Opinion

The parties relied upon stipulated testimony and documentary exhibits. Mikus' priority proof centers around the testimony of co-inventor Shaffer and his Technical Notebook. Shaffer testified that he prepared several compositions embraced by the count and recorded these compositions in his notebook. Each page of the notebook is signed and dated by Shaffer, but no page is witnessed. The pages presented do not follow a numerical sequence and numerous intervening pages are missing. Mikus says the missing material related to non-relevant work. Material from one page is occasionally continued on a much later page rather than on the next succeeding page, e. g., material from page 77 is continued on page 84, material from page 79 is continued on page 82.

Shaffer testified that he identified the compositions with lot numbers and gave these compositions, so identified, to technician Persun for testing. Persun testified that he performed Spectral Emission Distribution (SED) tests on these compositions and recorded the results on slips of paper which he returned to Shaffer. Persun also recorded the results in his own notebook. Persun did not sign his notebook but he did sign graphs made in the tests. The compositions are identified in these test results by lot numbers. Shaffer stapled the test results into his notebook. Shaffer also transmitted several composition samples to another technician, Kring, for X-ray diffraction testing. Kring performed the tests, recorded the results in his notebook, and initialed the pages.

Subsequently, Shaffer prepared a "Record of Invention" including a description of the composition on which he had worked and incorporating the test results of Persun and Kring. This "Record of Invention" was signed by inventors Shaffer and Mikus and witnessed by two others who testified to having read and understood the document. Some two years later the subject patent application was filed. The application contains tables and examples substantially the same as those in the "Record of Invention."

Mikus urges that an application of the "rule of reason" to the record as a whole—particularly to the consistency among Shaffer's notebook, the test results, the "Record of Invention," and the patent application—will establish adequate corroboration of actual reduction to practice. Wachtel, on the other hand, points out that no one, other than co-inventor Shaffer, witnessed a reduction to practice of a phosphor within the scope of the count, that the documentary proof adduced by Mikus is based entirely upon self-serving statements by co-inventor Shaffer, and that inconsistencies exist in Mikus' proof.

The board found insufficient corroborative evidence of an actual reduction to practice by Mikus. The "Record of Invention" and the test results were deemed based upon documents either actually prepared by one of the inventors or on facts furnished by one of the inventors. In a dissenting opinion, one board member expressed the view that the record indicates Shaffer could not have "fabricated or falsified" the proofs and, indeed, would have little to gain from doing so as the invention was assigned to his employer. The dissenting member reasoned that because the rule for corroboration exists to protect against such fabrication or falsification, the notebook, Record of Invention, and the patent application, all being consistent, provide adequate corroboration.

OPINION

In the prior appeal we agreed with the board's finding of reduction to practice by Wachtel, based upon a species reduction on August 14, 1967. Wachtel, as junior party, has thus borne his burden of proof. The burden now rests on Mikus to antedate Wachtel's priority date.

The objective sought in requiring independent corroboration of reduction to practice of a chemical composition invention is to insure that the inventor actually prepared the composition and knew it would work. Gianladis v. Kass, 51 CCPA 753, 324 F.2d 322 (1963). The standard is not inflexible and is not to be applied mechanically. Hence, a "rule of reason" approach is required. Linkow v. Linkow, 517 F.2d 1370 (Cust. & Pat.App.1975); Anderson v. Pieper, 58 CCPA 1221, 442 F.2d 982 (1971); Berry v. Webb, 56 CCPA 1272, 412 F.2d 261 (1969). Though each and every element of the count must be corroborated, there is no single, fixed corroboration formula. Documentary evidence and the activities of others may be corroborative. Phillips v. Carlson, 47 CCPA 1007, 278 F.2d 732 (1960). We have held that a "Record of Invention" and patent application, containing examples substantially identical to examples reported in an unsigned and unwitnessed inventor's notebook, and the testimony of a witness who was in a position to have observed the experiments first hand, provided significant corroborative evidence of an actual reduction to practice. Blicharz v. Hays, 496 F.2d 603 (Cust. & Pat.App.1974).

In a number of prior cases it was found significant that a witness, other than one of the inventors, testified to having some first-hand knowledge of the experiments.² In other cases this court has found sufficient corroboration of a specific property e. g., deceased person's notebook, properly authenticated to show that the production products were solid, Anderson v. Pieper, 58 CCPA 1221, 442 F.2d 982 (1971); test results showing that the material was stable and therefore had utility, Richardson v. Cook, 58 CCPA 1274, 442 F.2d 1398 (1971); test results indicating that the product produced was an organic photoconductor which corroborated utility, Mattor v. Coolegem, 530 F.2d 1391 (Cust. & Pat.App.1976).

In the case before us, no independent witness was produced who could testify to having first-hand knowledge of the composition's production, and it is not merely a property of the compound but the actual composition of the compound itself that is being questioned herein. Testimony of one who witnessed and understood the actual reduction to practice of a composition is strong evidence. It's absence need not be fatal, however, when other evidence is sufficient to corroborate such actual reduction to practice. In the present case, Mikus relies on such "other" evidence.

Mikus contends: that SED tests by Persun corroborate the presence of divalent europium in the sample composition; that it is generally known that firing trivalent europium in a reducing atmosphere reduces it to divalent europium; and that Kring's X-ray diffraction analysis...