Nicolaou v. Cooperman

• Citation: 438 F.2d 993
• Decision Date: 25 February 1971
• Docket Number: Patent Appeal No. 8439.
• Parties: Jean N. NICOLAOU, Appellant, v. Michael COOPERMAN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

438 F.2d 993 (1971)

Jean N. NICOLAOU, Appellant, v. Michael COOPERMAN, Appellee.

Patent Appeal No. 8439.

United States Court of Customs and Patent Appeals.

February 25, 1971.

Darryl Mexic, Richard C. Sughrue, Sughrue, Rochwell, Mion, Zinn & Macpeak, Washington, D. C., attys. of record, for appellant.

A. Russinoff, Princeton, N. J., for appellee.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation.

ALMOND, Judge.

This appeal is from the decision of the Patent Office Board of Patent Interferences involving appellant's application¹ and appellee's patent² and awarding priority to the junior party, the patentee Cooperman.

The subject matter in the interference relates to solid state display devices having an electroluminescent layer coupled to a layer of ferroelectric material. The ability of the ferroelectric material to distribute an A.C. signal to the electroluminescent layer is based on the impedance characteristic of the material. When a particular voltage, known as the coercive voltage, is applied to the ferroelectric material, it exhibits a low impedance to small A.C. signals. At other voltages, it exhibits a high impedance to such A.C. signals.

An A.C. signal is applied across the combination of the ferroelectric and electroluminescent layers and gets through the ferroelectric layer in sufficient amounts to energize the electroluminescent layer (and render it luminous) only in a region where low impedance exists. A bias voltage is applied to the ferroelectric layer in such manner that the voltage imposed varies from one end of the material to the other end at any instant. By varying the bias voltage, the coercive or critical voltage position moves across the ferroelectric layer. This causes the region of low impedance to move across the ferroelectric layer which in turn results in a region of light being swept across the electroluminescent layer.

The eleven counts of the interference are claims copied from the Cooperman patent. The broadest count reads:

1. An electroluminescent display device comprising an electroluminescent phosphor, a ferro-electric member electrically coupled to said phosphor, and means for providing a distributed bias across said ferro-electric member.

There are two issues on appeal. The first involves the operativeness of the Nicolaou device, which we find to be determinative of appellant's right to make the counts. The second concerns appellee's proof of reduction to practice prior to the August 7, 1959 filing date of the Nicolaou parent application. Since we affirm the decision of the board in regard to the first issue, we find it unnecessary to reach the second.

During the motion period, appellee moved to dissolve the interference on the ground that appellant has no right to make the counts for the reason that appellant has not disclosed an operative apparatus. The examiner denied this motion, and adhered to his decision on reconsideration. Both parties took testimony on the question of operability and, on final hearing, the board decided the issue of operability in favor of appellee. To aid in understanding the board's decision, we reproduce those findings of fact and law relevant to the operability issue:

Findings of Fact

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2. The Nicolaou disclosure (Ser. No. 832,290) has a primary object to provide an orthogonal scan in a solid state device which would replace the cathode ray tube for various display, pickup and memory applications in television, radar and computers. * *

* * * * * *

4. In describing his Fig. 2, Nicolaou states that the metallic wedge 14 "is assumed equipotential all over its surface" * * *.

5. In describing Fig. 1, Nicolaou states that its performance is identical to Fig. 2 * * * so metallic wedge 15 would also be equipotential.

6. Fig. 3 is described as a combination of Figs. 1 and 2 with the metallic layers adjacent each other.

7. If metallic elements 14 and 15 are equipotential the device is inoperative to perform the scan intended.

8. On page 11 of the Nicolaou specification appears the statement "The metal reflector wedges 14 and 15 are a short circuit in the Z direction but, they have a small resistence in the X-Y direction, enough to prevent the aforementioned spotsized charge to spread in the one frame period and thereby impair the optimum resolution obtainable from the aforesaid Differential Effect."

9. Nicolaou\'s expert witnesses Chernow and Kindig, testifying in March of 1967, averred that the statement of item 8 would make it obvious to them to leave the metallic plates out.

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Conclusions of Law

1. The statement relative to "small" resistance as set forth in fact 8 is inadequate to teach that metallic plates 14 and 15 should have such a high resistance as to suggest removal of these plates. In fact the teaching of Nicolaou is in the opposite direction. If in describing Figures 1 and 2 Nicolaou had intended layers 14 and 15 to be resistive in a necessary magnitude stated by Chernow (NR-54) to be in a range of 106-107 ohms per square (which is not "small") for operation he should have so stated. In his description however he specifically referred to the outer layers 12 and 17 as being resistive and layers 14 and 15 as being metallic, element 15 being specifically referred to as aluminum. One who copies a claim from an issued patent must have a clear disclosure which is not supplied by speculation of what one skilled in the art could make of the disclosure. Brand v. Thomas, 1938 C.D. 467; 96 F.2d 301 25 CCPA 1053; 37 USPQ 505.

2. We further note that even if the device were modified by removing the metallic plates it would still not be capable of performing the scans or display operations contemplated. The record contains considerable speculation as to how the modified device might be used but none of which are mentioned specifically in the Nicolaou disclosure.

3. We, therefore, are of the opinion that the Nicolaou disclosure is inoperative as disclosed and cannot support the counts.

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Priority of invention is awarded to Michael Cooperman, the junior party.

Appellant alleges that the board, through confusion of the legal tests for right to make the counts and the tests for operability, improperly placed the burden of proving operability on him. In support of this contention, appellant points to the board's citation of Brand v. Thomas, 96 F.2d 301, 25 CCPA 1053 (1938), which involved a right to make issue. We, too, are somewhat confused by the citation of Brand v. Thomas. If it was cited to indicate that appellant had the burden of proving that the device disclosed in Nicolaou was operable or could be made operable by one of ordinary skill in the art, this would clearly be in error. Chase v. Gartner, 374 F.2d 914, 54 CCPA 1385 (1967); Field v. Knowles, 183 F.2d 593, 37 CCPA 1211 (1950); Trumbull v. Kirschbraun, 67 F.2d 974, 21 CCPA 758 (1933). The tests and burdens to be applied when operability is in issue were set forth by this court in Field v. Knowles, supra:

The disclosure of an application placed in interference by the Patent Office is presumed to be an operative disclosure, Mark v. Greenawalt, 32 App.D.C. 253, and will not be held to be inoperative unless it is established (by the junior party by a preponderance of the evidence, Trumbull et

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