Nitz v. Ehrenreich
| Decision Date | 15 July 1976 |
| Docket Number | Patent Appeal No. 76-506. |
| Citation | 537 F.2d 539 |
| Parties | Jacob NITZ and Glenn R. Graham, Appellants, v. Leo C. EHRENREICH, Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
David A. Greenlee, Thomas S. Baker, Jr., Columbus, Ohio, attorneys of record, for appellants.
William H. Webb, Webb, Burden, Robinson & Webb, Pittsburgh, Pa., Raymond W. Green, David E. Dougherty, Niagara Falls, N. Y., attorneys of record, for appellee.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
This appeal is by Nitz and Graham (Nitz) from the decision of the Board of Patent Interferences awarding priority of invention to Ehrenreich. The interference was provoked when senior party Ehrenreich copied, in modified form,1 claims 3 and 13 of Nitz's Patent No. 3,552,533.2 The Commissioner disapproved a board recommendation of no interference in fact on count 1, after which the board awarded priority of invention of counts 1 and 2 to Ehrenreich on the basis of his earlier filing date. We vacate on count 1 and affirm on count 2.
The invention relates to carbonized articles useful in aircraft braking systems. An improvement over conventional carbonized articles is achieved by the addition of an agent which increases the coefficient of friction of carbon. Counts 1 and 2, including modifications of the patent claims from which they were copied (deletions bracketed, additions underscored), describe the subject matter as follows:
The friction modifying agents disclosed by Nitz are "silicon carbide, or alumina, or cast iron grit, etc."
Ehrenreich's disclosure concerns the improvement of carbon's physical and chemical properties by addition of boron-containing compounds. All of Ehrenreich's boron-containing compounds reinforce carbon articles. All reduce the coefficient of friction, except ditungsten boride, which is taught to be effective in increasing the coefficient of friction. A disclosed example of the utility of ditungsten boride is its use as a friction modifier in aircraft brake system parts.
From the beginning, Nitz has insisted that the counts do not define common subject matter claimed by both parties. After declaration of the interference, Nitz filed no Preliminary Statement, but did file a Motion to Dissolve, under Rule 231(a)(1) (37 CFR 1.231(a)(1)), alleging (1) Ehrenreich's inability to make count 1 in view of 35 U.S.C. § 112, (2) absence of interference in fact on count 1 because that count is an improper modification of his claim 3 in that the "12 percent by weight friction modifier" limitation is material as shown by Nitz' patent specification, and (3) no interference in fact on count 2 because its modification deleted a material limitation. The motion was denied by the Primary Examiner.
The board took jurisdiction and recommended to the Commissioner under Rule 259, 37 CFR 1.259, that the interference be dissolved with respect to count 1. The board's view was that because the patent claim limitation of "up to 12 percent by weight friction modifier" was replaced with "up to about 48 percent by weight friction modifier" in the count, patentably distinct inventions were involved and no interference in fact existed. The Commissioner disapproved the recommendation, noting that both discoveries are directed to energy absorbing articles improved by addition of a friction modifier. In the Commissioner's opinion, the amount of modifier added was not critical and no basis therefore existed for allowing claims in separate patents.
With the case in that posture, the board concluded that "Ehrenreich's right to make is the only remaining issue as to Count 1, while the issue of interference in fact remains as to Count 2." On the right to make count 1, the board found that though Ehrenreich's disclosure does not expressly disclose an operating temperature of 3000°F, an article capable of performing satisfactorily at that temperature is disclosed. That conclusion was based on prior art indications of the functioning of conventional carbon articles at 6000°F and Ehrenreich's disclosure that his invention results in "improved physical properties and increased oxidation resistance at high temperatures as compared to conventional reinforced carbon and graphite articles."
Additionally, the board held Ehrenreich's disclosure sufficient to support the count limitation of "up to about 48 percent" modifier because it would "be perfectly obvious to one of ordinary skill in the art to arrive at a quantity of about 48 percent by weight friction modifier * * * merely by conducting simple experiments," in view of Ehrenreich's equivalent disclosure of "7%" by volume of friction modifier.
The board viewed the deletion of the "woundup" limitation (the sole issue on count 2) as an immaterial modification of claim 13 of Nitz's patent. Citing Brailsford v. Lavet, 318 F.2d 942, 50 CCPA 1367, 138 USPQ 28 (1963) and McCabe v. Cramblet, 65 F.2d 459, 20 CCPA 1220, 18 USPQ 71 (1933), the board held that an interference in fact exists because the "woundup" distinction between the patent claim and the count was shown to be old by prior art and, hence, not a patentable distinction.
With the issues of interference in fact and right to make the counts decided, the board awarded priority, on the basis of filing dates, to senior party Ehrenreich.
The issues are (1) the jurisdiction of this court to decide the interference in fact question and (2) the existence of interference in fact with respect to counts 1 and 2.
Because we hold that no interference in fact exists with respect to count 1, we do not reach the issue of Ehrenreich's right to make that count.
OPINION(1) Jurisdiction
Ehrenreich questions our jurisdiction to decide the interference in fact question on the ground that a decision thereon requires determination of patentability issues. We do not agree. Ehrenreich contends that Nitz's presentation of the interference in fact issue, i. e., Nitz's reliance on 35 U.S.C. § 112 and Nitz's "admission" that the counts do not define his invention, raises patentability questions. Our jurisdiction, however, does not rest on the manner in which an issue is presented. It entails review of decisions of the Board of Interferences on the issue of priority and questions ancillary thereto. The existence of common subject matter defined by the interference count is a prerequisite for an award of priority, i. e., the existence or nonexistence of interfering subject matter goes to the very foundation on which an interference rests. Determination of the presence or absence of interfering subject matter is "logically related" to the jurisdiction-conferring issue of priority because that determination necessarily precedes a priority award. Myers v. Feigelman, 455 F.2d 596, 59 CCPA 834, 172 USPQ 580 (1972); Palisades Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 58 CCPA 1225, 169 USPQ 790, cert. denied, 404 U.S. 938, 92 S.Ct. 269, 30 L.Ed.2d 251, 171 USPQ 641 (1971). Accordingly, we conclude that the question of interference in fact presented in this case is one ancillary to priority and may be properly considered by this court.3
Though neither argued nor discussed by the parties, we note an element of first impression in the facts of this case. The Commissioner disapproved herein the board's recommendation that the interference be dissolved and decided that an interference in fact existed with respect to count 1. The Commissioner's decisions are not per se appealable. We find, however, that the interposition of the Commissioner does not affect our jurisdiction under the circumstances of this case.
In the declaration of all interferences, the Commissioner (or his examiner-delegate) makes an initial determination that two or more parties are claiming the same or substantially the same subject matter.4 An interference in fact issue raised in an interference would thus be and has without question been traditionally preserved for appeal to this court. That the Commissioner made the same decision a second time in the present interference does not operate to defeat the jurisdiction of this court to decide the issue on its merits.
Moreover, as above indicated, a decision that an interference in fact exists, by whomever made, is a decision ancillary to priority. When such decision is made by the Commissioner, neither its ancillary to priority nature nor the jurisdiction of this court is destroyed. See ...
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