Norton v. Curtiss

• Decision Date: 11 February 1971
• Docket Number: Patent Appeal No. 8332.
• Citation: 167 USPQ 532,433 F.2d 779
• Parties: Frederick H. NORTON, Appellant, v. Lawrence E. CURTISS, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

167 USPQ 532, 433 F.2d 779 (1970)

Frederick H. NORTON, Appellant, v. Lawrence E. CURTISS, Appellee.

Patent Appeal No. 8332.

United States Court of Customs and Patent Appeals.

November 12, 1970.

Rehearing Denied February 11, 1971.

COPYRIGHT MATERIAL OMITTED

Amster & Rothstein, New York City, attorneys of record, for appellant. Morton Amster, James Reisman, New York City, William C. Nealon, Southbridge, Mass., of counsel.

W. Philip Churchill, Fish & Neave, New York City, for appellee. Lee C. Robinson, Jr., John A. Howson, New York City, of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation.

BALDWIN, Judge.

Norton appeals from the decision of the Board of Patent Interferences awarding priority to Curtiss of the two counts in interference No. 93,002 involving the applications¹ of the two parties.² Curtiss is the senior party because of his earlier filing date. Both parties have presented considerable evidence in the nature of testimony and documentary as well as physical exhibits.

The Invention of the Counts

The invention at issue deals with the art which has come to be called "fiber optics". In this field, optical fibers, made of flexible, light-transmitting material and having a very small diameter, are used instead of conventional lenses and mirrors to transmit light and images. Many thousands of these fibers are bound together to form what is said to be known in the art as a "bundle". When the individual fibers making up the bundle are arranged at each end of the bundle in the same relationship that they bear to each other at the opposite end of the bundle, the result is called a "fiberscope", which, when properly made of the right kind of fibers, constitutes an image-transmitting device. Such instruments are extremely useful for looking into what are otherwise practically inaccessible areas, such as the interior of the human stomach or that of an engine or other complicated apparatus. Needless to say, there are many other light and/or image transmitting uses.

Count 1 of the interference relates to a single light-transmitting optical fiber having a glass core of a relatively high index of refraction³ and a glass coating (or cladding) of a relatively lower refractive index. The count is reproduced below:

1. A flexible optical light transmitting glass fiber for use in forming a flexible image transmitting device made up of a plurality of such fibers in side-by-side relation, comprising an elongated optically clear glass fiber core formed of glass of a predetermined index of refraction and being of substantially uniform cross section from end to end thereof, said glass core having a relatively thin glass coating of substantially uniform thickness fused to its entire outer surface, said glass coating having an index of refraction which is lower than that of said glass core and being adapted to prevent light from escaping from said core into said coating said core having a thickness of up to about 0.002 inch.

Count 2 is drawn to "an optical light transmitting device, comprising a large number" of the fibers of count 1.

Each party attempted to establish priority in the proceedings below by showing that he conceived the invention before the other and that he either actually reduced it to practice first or was diligent in reducing it to practice from a time before the other's conception until his own reduction to practice. After a detailed analysis of the evidence, the board concluded that Norton had satisfactorily proved conception of the invention no earlier than April, 1957. It was further concluded that, while Norton had demonstrated diligence, he had proved no actual reduction to practice prior to his application filing date of July 3, 1957. With regard to the party Curtiss, the board found that Curtiss was in possession of a complete and operative conception of the invention of the counts in December of 1956. That holding, coupled with its finding that Norton did not prove conception before April, 1957, or reduction to practice prior to his July 3, 1957, filing date, compelled the decision that Curtiss was the first to conceive and the first to reduce to practice even if he were restricted to his May 6, 1957 filing date as a reduction to practice. Apparently for that reason, the board specifically refrained from making a holding whether Curtiss had actually reduced the invention to practice in December 1956 or at any other specific time before his filing date.

The parties here have fully contested the priority issues. However, before we can reach those issues we must resolve an additional issue. The party Norton has charged that Curtiss committed fraud on the Patent Office during the ex parte prosecution of his application and that, as a result of this fraud, the Curtiss application should be stricken under Patent Office Rule 56⁴ and "priority" awarded to Norton.

Jurisdiction

At the outset, we are confronted with the contention by Curtiss that the court "is not required" to review the decision below as to Norton's charges of misconduct "because they do not raise a question ancillary to priority." He points out that Norton's charges have to do only with events that occurred some three years after the Curtiss application was filed and urges that because they therefore could not possibly have any effect on priority, they are "strictly a matter for the Patent Office to consider on an ex parte basis."

We disagree. If the charges made by Norton are found to be of substance, Curtiss stands to lose, at the least, his right to have those claims in his present application to which the charges relate mature into a patent. That translates, in this case, to a loss of standing as a party to the interference. This question is clearly one which is ancillary to priority and was therefore properly considered by the board and must now be reviewed by this court.⁵

Background

In order to place this controversy in its proper perspective, it will be necessary to give a rather extensive development of the facts as we have derived them from the record. Since the asserted fraud was perpetrated during the prosecution of the Curtiss application, some of this discussion will relate to what went on during ex parte proceedings.

Initially, we point out that the applications of both parties now before us were copending before the same examiner and were being examined concurrently. The position originally taken by the examiner, in both applications, was that the claims directed to the invention now before us were unpatentable because they involved the mere substitution of obviously equivalent materials. The file of the Curtiss application shows that, after the first rejection of his claims, Curtiss and his attorney conducted two interviews with the Primary Examiner and his assistant. No verbatim record of what was said at these meetings was made, but in each case, the attorney followed up the interview with an amendment and, in the accompanying remarks, extensively discussed what transpired at the interview.

With regard to the first interview, we accept the board's summary of the remarks accompanying the ensuing amendment:

In the amendatory remarks, Curtiss\' attorney acknowledged the interview of July 20, 1960 and stated that "an image transmitting fiber bundle containing glass-coated glass fibers" was there demonstrated, that the examiners "immediately recognized the superior and outstandingly unique properties of this image transmitting device", and that the examiners suggested "that applicant submit an affidavit in support of the fact that applicant\'s glass-coated glass fibers have properties so different from and so superior to plastic-coated fibers that applicant\'s glass-coated glass fibers and fiber bundles made therefrom represent an important and patentable advance over the prior art."

In the affidavit which accompanied these remarks (filed at the suggestion of the examiners) Curtiss swore, inter alia, that prior to this filing date of May 6, 1957, he had made and compared⁶ both glass-coated and plastic-coated fibers using the same type of glass for the core material of each, the plastic and glass coating materials used being of the same index of refraction; that a comparison of equal lengths of the two fibers as originally made showed that "the plastic-coated fibers were markedly inferior in transmitting light than the glass-coated fibers, that the plastic-coated fibers in relatively short lengths of about 12 inches or less had only marginal usefulness even when used with extremely brilliant light sources and that long lengths of such plastic-coated fibers were entirely useless for transmitting light."

The affidavit concluded with a paragraph describing a specific test comparison of the two types of fibers, performed on or about October 6, 1960, and using samples which Curtiss had prepared. It was stated that "the glass-coated fiber specimens transmitted sufficient light to permit their being satisfactorily used in a light transmitting device." On the other hand, it was stated that the plastic-coated fiber specimens "were entirely unsatisfactory for use in a light transmitting device" and were "virtually incapable of transmitting light except for such light rays which happen to pass axially through the fiber essentially without the occurrence of internal reflections."

The examiner responded that this affidavit was not persuasive and made the rejection final. Curtiss requested a second interview. As to what went on at that second interview, we also accept the board's summary of the follow-up amendment:

In the amendatory remarks, Curtiss\' attorney acknowledged the interview of October 25, 1961, and stated that the Examiner had "indicated his recognition of applicant\'s contribution to the art." He explained the arguments presented at the interview "at length," viz.: (a) that the fiber optics art had fallen far short of

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