Parker v. Frilette

• Decision Date: 09 November 1972
• Docket Number: Patent Appeal No. 8647.
• Citation: 462 F.2d 544,174 USPQ 321
• Parties: Paul T. PARKER, Appellant. v. Vincent J. FRILETTE and Paul B. Weisz, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

174 USPQ 321, 462 F.2d 544 (1972)

Paul T. PARKER, Appellant. v.Vincent J. FRILETTE and Paul B. Weisz, Appellees.

Patent Appeal No. 8647.

United States Court of Customs and Patent Appeals.

July 13, 1972.

Rehearing Denied November 9, 1972.

Roy J. Ott, John J. Schlager, Linden, N.J., attorneys of record, for appellants.

Raymond W. Barclay, New York City, attorney of record, for appellees; Richard K. Stevens, Arlington, Va.(Stevens, Davis, Miller & Mosher, Arlington, Va.), of counsel.

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

ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Patent Interferences awarding priority to appellees, Vincent J. Frilette and Paul B. Weisz(Frilette), the junior party.Appellant, Parker, is involved on application serial No. 741,906 filed June 13, 1958, which is assigned to Esso Research and Engineering Company.The five counts in issue are modified forms of claims copied by Parker from Frilette patent No. 3,140,322, which issued July 7, 1964 on an application filed August 14, 1958.The Frilette patent is assigned to Mobil Oil Corporation.The issues here are the sufficiency of each party's proofs concerning reduction to practice.

The invention involved relates to a process for selectively conducting an organic chemical reaction (i.e., selective catalytic hydrocarbon conversion) by employing a solid crystalline zeolite (i.e., a molecular sieve) containing an added catalyst and having uniform interstitial (i.e., intra-crystalline) dimensions of sufficient size to allow the passage into or out of the pores of the zeolite of only certain molecules having a particular shape or size.The parties have termed these characteristics as "reactant selectivity" and "product selectivity."That is, the molecular sieve produces selectivity by a molecular filter action which prevents some feed molecules from coming into contact with the added catalyst (reactant selectivity) and/or prevents some products produced by the added catalyst from leaving the internal pore structure (product selectivity).

The parties have dealt with the issues relative to counts 6-8 as separate from the issues relative to counts 9 and 10, and we shall do likewise.We reproduce counts 6 and 9 as illustrative of the respective sets of counts:

6.A process for selectively conducting an organic chemical reaction which comprises carrying out a reaction involving contact of at least two molecular species of differing shape with a crystalline aluminosilicate zeolite molecular sieve material, bearing within the interior thereof an added catalyst, introduced into the zeolite subsequent to formation thereof, and active in effecting conversion of at least one of said species contained within the pores of said zeolite, which zeolite has uniform interstitial dimensions sufficiently large to afford the release from said pores of the product of said conversion but sufficiently small to exclude from said product molecular species of larger size, effecting catalytic conversion of at least one of said species contained within the pores of said zeolite to a material chemically distinct therefrom and of a molecular shape capable of passing from the interior of said zeolite and simultaneously withdrawing, the product so obtained from the resultant effluent stream.

9.A process for selectively conducting an organic chemical reaction which comprises passing a charge capable of conversion into products of different molecular sizes over a crystalline aluminosilicate zeolite molecular sieve material having uniform interstitial dimensions sufficiently large to release conversion products of lesser molecular weight but sufficiently small to prevent release of larger products of conversion and bearing within the interior thereof an added catalyst, active in promoting said reaction, introduced into the zeolite subsequent to formation thereof, effecting catalytic conversion of the charge material admitted to contact with said catalyst within the interior of said zeolite to convert the same to at least one chemical species distinct from said charge and of a molecular size capable of passing from the interior of said zeolite and simultaneously withdrawing, said chemical species from the effluent stream passed over said zeolite.

I. Frilette's Asserted Reduction to Practice of Subject Matter Within Counts 6-8

The board awarded priority to Frilette as to counts 6-8 on the basis of certain laboratory work performed in January, February, and March of 1958 by Golden and Esgro.This work, designated as the "DC runs," employed a molecular sieve material known as Linde 5A, which is manufactured by the Linde Division of the Union Carbide Corporation.This material was produced by replacing sodium ions in a Linde 4A molecular sieve with calcium ions, thereby effecting an increase in the uniform pore diameter from about four angstroms to about five angstroms.

Parker attacks Frilette's proof of actual reduction to practice for the following reasons: (a) at the time of the runs, the Linde 5A sieves were not known to contain an added catalyst; (b) there is no competent evidence with respect to the catalyst used; (c) proof of the feed stock used is inadequate; (d)appellee's failure to produce original data sheets abridged appellant's right of cross-examination; (e) testimony concerning the runs is inconsistent; (f) there was no conviction of success relative to the runs; (g) certain corroborating evidence is hearsay; and (h) the work was limited to the intrinsic activity of zeolites, not activity induced by an added catalyst.

Despite similar arguments before the board, priority was awarded to Frilette on the ground that the work of Golden and Esgro shows reduction to practice of counts 6-8.After a thorough review of the record and the briefs and arguments of counsel, we find no reversible error in the decision of the board.We will not discuss in detail each point raised by appellant; rather, we think it sufficient to quote from the board's decision, with which we agree:

* * * We are satisfied that the zeolitic material listed as 5A by Golden in his laboratory record responds to the counts.We find no better identification of the zeolitic material employed by Parker in the Parker record.

* * * We are also satisfied that the charge stocks used by Golden were properly identified.Golden testified concerning his use of "120-160 Mid Cont Cut (98 O.N.)" * * *.As to the work of Esgro with Golden, we regard Esgro as another pair of hands for Golden.Golden supplied him with the charge stocks and catalysts.Esgro carried out the work and reported back to Golden, who kept the records.Prater * * * testified that Esgro was a competent laboratory assistant, Weisz * * *, that he was a reliable employee.Both testified that he carried out a supervisor\'s instructions to the minute detail.

* * * We are satisfied that the analytical results of Golden Exhibits 3-27 are adequately proven by the testimony of Montgomery who was group leader of the low molecular weight mass spectrometry.The rule of reason normally is followed in applying the hearsay rule.Hurwitz v. Poon, 53 CCPA 1502, 364 F.2d 878, 150 USPQ 676.

* * * While Parker states that Frilette et al. had no conviction of success as to the work of Golden and Esgro, we feel that the presentation of the data of page 697553 of Golden Exhibit 1 to the Catalyst Group Meeting of April 22, 1958 * * * and the statement therein that:

The selective cracking of n-hexane is clearly seen.

as well as the similar statement on page 697553 provide evidence of such conviction.

In addition to what the board said, we think it necessary to add some comments relative to what appears to be appellant's main contention—that the Linde 5A zeolites used in the runs were not "known" or "shown" to contain an "added catalyst" which was effective as such.Appellant contends that the runs really showed only intrinsic catalytic activity of the 5A material and seems to take the view that the tests could constitute a reduction to practice only if it was known that the calcium in the 5A zeolites performed as a catalyst extrinsic to the zeolite and the results of the runs demonstrated that the calcium acted effectively as such an extrinsic catalyst.

The trouble with that contention is that appellant's own application, on which he must rely for support of the counts, does not establish any recognition of the intrinsic-extrinsic theory.He is in no position, therefore, to impose such a restriction on Frilette's proofs.SeeBlicke v. Treves, 241 F.2d 718, 44 CCPA 753(1957).

The counts in issue are broad enough to cover use of Linde 5A zeolite catalysts formed by exchange of sodium ions with a metal, such as calcium, wherein the exchanged ion acts as an added catalyst effecting conversion as defined.The reference to added catalysts is unambiguous, and it is clear that the DC runs involved the use of such a catalyst.It seems to be conceded that it is now known that the calcium ions in the Linde 5A zeolite in fact function as an added catalyst resulting in the selective catalytic conversion claimed.Since Frilette achieved selective catalytic conversion, and recognized the fact that selectivity was achieved, using a molecular sieve which is encompassed by the unambiguous counts in issue, the proof of reduction to practice is sufficient.There is no need for Frilette to prove contemporaneous recognition of the fact that selectivity was achieved through the mechanism of the calcium acting as an added catalyst inducing activity extrinsic of the zeolite since Parker also failed to recognize that fact.An inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.

II.Frilette's Asserted Reduction to Practice of Subject Matter Within Counts 9 and 10

The board awarded...