Normann v. Schmidt

• Decision Date: 02 February 1942
• Docket Number: Patent Appeal No. 4556.
• Citation: 52 USPQ 342,125 F.2d 162
• Parties: NORMANN et al. v. SCHMIDT et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

52 USPQ 342, 125 F.2d 162 (1942)

NORMANN et al. v. SCHMIDT et al.

Patent Appeal No. 4556.

Court of Customs and Patent Appeals.

February 2, 1942.

Watson, Cole, Grindle & Watson, of Washington, D. C. (Francis G. Cole, of Washington, D. C., and Nelson Littell, of New York City, of counsel), for appellants.

Harold T. Stowell, of Washington, D. C. (Hutz & Joslin, of New York City, of counsel), for appellees.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal in an interference proceeding from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the Examiner of Interferences awarding priority of invention to appellee with respect to the four counts of the interference. Count 1 is illustrative and reads as follows: "1. The process of preparing alcohols comprising subjecting a higher aliphatic carboxylic acid having more than five carbon atoms to a high temperature and pressure adapted to reduce acids to alcohols in the presence of hydrogen and a hydrogenating catalyst until reduction of the acid to alcohol has taken place."

For the purposes of this appeal the involved invention is sufficiently described in the quoted count.

The interference originally involved three parties — appellants, appellee, and one Walther Schrauth. Inasmuch as Schrauth did not appeal from the decision of the board adverse to him he is not a party to this appeal. The title of the cause as returned to this court erroneously included the name of Schrauth as appellee; he of course is in no way involved in this appeal and the title of the case is changed to conform to this fact.

Appellants' application was filed on July 13, 1931, serial No. 550,616, and the application of appellee was filed on April 1, 1931, serial No. 527,060.

The interference was originally declared on May 28, 1936, between appellants and appellee upon a singe count, which is count 1 of the instant interference.

During the motion period appellants moved to dissolve the interference, alleging inter alia that appellee was barred from receiving a patent on the invention by reason of the issuance to appellee of a patent for the same invention in a foreign country, upon an application filed more than 12 months prior to the filing of his instant application.

Appellants being the junior party, they also moved to shift the burden of proof because of reliance by them upon a German application for the same invention filed by them on July 18, 1930. It further appears that appellants moved to add another count to the interference. Appellee, in response to said motion, filed a certified copy of a German application, No. 12 o 3I 317.30, filed by him in Germany on April 7, 1930, disclosing and claiming the here involved invention. Appellee also moved to add 6 counts to the interference.

The Primary Examiner denied appellants' motion to dissolve, the motion to shift the burden of proof, and the motion to add a count to the interference, and the motion of appellee to add counts was granted as to three of them and denied as to the others. The three counts thus added are counts 2, 3, and 4 of the instant interference.

It appears that in their motion to dissolve the interference upon the ground that the claim corresponding to the count was not patentable to appellee, appellants relied principally upon a British patent to appellee's legal representatives, No. 356,731, issued on September 1, 1931, which discloses and claims the subject matter here in issue. It appears that two provisional applications were filed in connection with said patent, one bearing the date of March 1, 1930, and the other the date of June 25, 1930.

The first of said applications does not disclose the involved invention, but only the production of alcohols from the esters of carboxylic acids. The second of said applications discloses the invention here involved, viz., the production of alcohols from carboxylic acids.

The patent issued upon said provisional applications contains claims embracing the production of alcohols from both carboxylic acids and from their esters.

Appellants petitioned the Commissioner of Patents, in the exercise of his supervisory authority, to instruct the examiner to revise his decision and hold that said English patent constitutes a statutory bar against appellee receiving a patent upon his instant application, and further to revise the examiner's decision and hold that appellee's instant application was not filed within 12 months of the earliest filed application upon which the British patent was issued, and therefore that appellee must be confined to his domestic filing date for reduction to practice in this country, and that the examiner should be directed to shift the burden of proof and make appellants the senior party. This petition was denied by the commissioner.

Thereafter, on October 25, 1937, the interference was redeclared, Schrauth being made a third party thereto, with the three added counts proposed by appellee.

After the redeclaration of the interference appellants renewed their motion to shift the burden of proof, basing such renewal upon the fact that on February 3, 1938, a German patent was published which was issued upon an application of a representative of appellee filed November 20, 1925, which patent, appellants alleged, disclosed the reduction of carboxylic acids to alcohols in accordance with the counts of the interference, and that, as appellants are entitled to the date of their German application, July 18, 1930, it should be held that appellants are the senior party, more than 12 months having elapsed between appellee's first filed foreign application and the filing date of his instant application.

Inasmuch as the filing date of the application of the third party Schrauth antedated the filing dates of the applications of appellants and appellee, he Schrauth became the senior party, and appellee moved to shift the burden of proof as between himself and Schrauth to make appellee the senior party by virtue of the filing date of the German application filed by his representative on April 7, 1930, and by virtue of the filing date of his British provisional specification of June 25, 1930.

The Primary Examiner denied appellants' motion to shift the burden of proof and granted that of appellee.

Thereafter the Examiner of Interferences entered judgment on the record against the junior parties, appellants and Schrauth, and awarded priority of invention to appellee, the senior party.

Appellants appealed from this decision to the Board of Appeals, alleging in their assignments of error, inter alia, a statutory bar against appellee receiving a patent upon his application.

The Board of Appeals dismissed the grounds of appeal relating to patentability of the counts to appellee, and set the appeal for hearing only on the question of priority of invention.

With respect to priority of invention the board affirmed the decision of the Examiner of Interferences awarding priority of invention to appellee with respect to all of the counts, holding that appellee's first application in a foreign country for the involved invention was filed on April 7, 1930, and that, his instant application having been filed in this country within 12 months from said April 7, 1930, appellee is entitled under the provisions of R.S. § 4887, 35 U.S. C.A. § 32, to said last named date for conception and reduction to practice of the invention, and that, as said date is earlier than any date to which appellants are entitled, appellee is entitled to an award of priority.

From such decision appellants have taken this appeal.

R.S. § 4887 reads as follows:

Sec. 4887. U.S.C., title 35, § 32, 35 U.S.C.A. § 32 "No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than twelve months, in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes 31 of this title, and six months in cases of designs, prior to the filing of the application in this country, in which case no patent shall be granted in this country.

"An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country: Provided, That the application in this country is filed within twelve months in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes 31 of this title, and within six months in cases of designs, from the earliest date on which any such foreign application was filed. But no patent shall be granted on an application for patent for an invention or discovery or a design which had been patented or described in a printed publication in this or any foreign country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country for more than one year prior to such filing." (Italics ours.)

Certain of appellants' reasons of appeal allege error by the Board of Appeals in not holding that a statutory bar exists against appellee's receiving a patent for the invention in this country.

That such a question may not be considered by us upon an appeal...