Peeler v. Miller

• Decision Date: 10 June 1976
• Docket Number: Patent Appeal No. 76-503.
• Citation: 535 F.2d 647
• Parties: Robert L. PEELER et al., Appellants, v. David R. MILLER, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

535 F.2d 647

Robert L. PEELER et al., Appellants, v. David R. MILLER, Appellee.

Patent Appeal No. 76-503.

United States Court of Customs and Patent Appeals.

June 10, 1976.

C. J. Tonkin, San Francisco, Cal., attorney of record, for appellants.

Herbert B. Roberts, St. Louis, Mo., attorney of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

The senior party, Peeler, Godfrey, and Furby (Peeler),¹ appeals from the decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (board), one member dissenting, awarding priority of invention in five counts to the junior party, Miller.² We reverse.

The Subject Matter

Counts 6 and 8 adequately describe the subject matter:

6. A power transmission fluid consisting essentially of a major portion of a phosphate ester having a tendency to cause cavitation erosion damage, and as an additive effective in reducing such damage, from 0.01 to 10% by weight of a halocarbon containing only halogen atoms and at least one carbon atom having a boiling point below 75°C, wherein the halogen substituents on said halocarbon are chlorine, bromine or fluorine or combinations thereof.

8. A method of inhibiting cavitation damage to a hydraulic system utilizing a hydraulic fluid consisting essentially of a major portion of a phosphate ester, which method comprises maintaining in said hydraulic fluid by addition 0.01 to 10% by weight of a halocarbon containing only halogen atoms and at least one carbon atom having a boiling point below 75°C, wherein the halogen substituents on said halocarbon are chlorine, bromine or fluorine or combinations thereof.

The Evidence

Peeler took no testimony and relied on his filing date. Miller submitted testimony in the form of affidavits (by stipulation) from himself, various Monsanto colleagues, and William Black, the Monsanto patent attorney who prepared and filed Miller's application. Miller's efforts, culminating in this invention, began in the fall of 1964 when he became aware of serious hydraulic valve leakage in British "Trident" aircraft using Monsanto's SKYDROL 500A brand hydraulic fluid. He concluded that cavitation³ was responsible for the problem and began the search for a fluid additive to overcome the problem.

In 1965, in ultrasonic vibrating probe tests, in which a soft metal tip is vibrated at high frequency in a beaker containing SKYDROL 500A and the additive under test and the loss of metal from the tip measured, it was found that water as an additive would reduce cavitation damage substantially. This laboratory finding was confirmed in use in the Trident aircraft. In March 1966 Miller thought of using FREON 11 (the DuPont trademark for trichloromonofluoromethane) as the additive and also other halocarbons, which are fire-resistant and, like water, have high volatility in relation to the base fluid, as anti-cavitation additives. On March 8 Miller instructed a colleague (Stainbrook) to conduct ultrasonic vibrating probe tests using FREON 11 as the additive. Stainbrook performed one control run and one run with FREON 11 as the additive on that day. Stainbrook's affidavit and Miller's March 14 notebook page indicate that FREON 11 significantly reduced erosion of the probe tip in the experiment. In his notebook entry Miller indicated, "To better assess such additives, we are setting up hermetically sealed sample containers." The record does not show that hermetically sealed containers were subsequently used by Miller.

On April 5, 1966, Miller submitted a "preliminary disclosure of invention," which his superiors in the Research Department of Monsanto's Organic Chemicals Division rated "A (Ready to file)" on April 18, 1966. Presumably, this disclosure was forwarded to Monsanto's patent department for action soon thereafter, but the record does not show when this occurred.

From the time when Miller's invention disclosure was rated "A (Ready)" more than four years elapsed until Miller's filing date. Miller continued working on cavitation inhibitors of undisclosed nature during this time, and in September 1966 he gave presentations at several U.S. aviation industry meetings on Monsanto's solution of the Trident valve damage problem. Stainbrook stated that he ran vibrating probe tests in October 1967 using FREON 112(a) (apparently tetrachlorodifluoroethane) as the additive and that he informed Miller of his results. What Miller did with this information is not indicated in the record. Meanwhile, there is no evidence of action in Monsanto's patent department until the arrival of Mr. Black in October 1968, some two and a half years after Miller's alleged actual reduction to practice. Mr. Black's affidavit states in material part:

He was employed by Monsanto on October 14, 1968. He was assigned responsibility for the following areas:

Petroleum Additives Functional Fluids Polyphenyl Ethers Synthetic Lubricants

He was assigned four areas because the three attorneys who had previously handled them had resigned in the previous four months.

He recalls that as of January 1969 he was responsible for:

1) about 60 to 70 pending U.S. Applications

2) over 400 foreign pending applications

3) over 100 active invention disclosures of which

27 were A — ready to file

21 were A — not ready to file

He recalls that as of that date, Miller's invention disclosure * * * was in order of filing priority, 31st on the list out of 48 cases.

He generally filed invention disclosures according to their order of priority.

The Board Opinions

The board majority found that Miller had actually reduced the invention of the counts to practice in April 1966 and that he had not abandoned, suppressed, or concealed the invention within the meaning of 35 U.S.C. § 102(g).⁴ The majority found that Miller's March 1966 vibrating probe tests were sufficient to show that the invention was suitable for the use set forth in the counts, i. e., cavitation inhibition in hydraulic systems. The tests were held not to have been abandoned experiments. The majority rejected Peeler's claim that Miller had suppressed the invention, on the basis that there was no evidence that Miller intended to suppress the invention or in fact did so.

The dissenting member disagreed on both the reduction to practice and suppression issues. He concluded that the single probe test using FREON 11 as the additive was insufficient to establish reproducibility of results, citing Conner v. Joris, 241 F.2d 944, 44 CCPA 772 (1957), and that Miller's March 14 notebook entry, quoted in part supra, showed that Miller believed he had a "lead," not an actual reduction to practice, which required further experimentation "to better assess such additives." The dissenter viewed the inactivity at Monsanto after the purported reduction to practice, coupled with Stainbrook's 1967 experiments, to indicate a lack of conviction of success by those in authority at Monsanto, and he concluded that the March 1966 tests constituted abandoned experiments. On the suppression issue, the dissenter commented:

* * * I also believe that the patent statutes were not designed to protect a first inventor who slumbers, to the detriment of a second inventor who tries to disclose his invention to the public and this I believe is what we have before us.

He concluded that the delay at Monsanto was "an unreasonable delay analogous to `res ipsa loquitur' transferring the burden of proof to Miller to prove that the invention was not suppressed, concealed, or abandoned under the provisions of 35 USC 102(g)." (Emphasis in original.) The dissenter relied on the majority and concurring opinions — the latter by the author of this opinion — in Young v. Dworkin, 489 F.2d 1277 (CCPA 1974) to support this conclusion.

OPINION

While we agree with the board majority that Miller proved by a preponderance of the evidence⁵ that he had actually reduced the invention to practice in March 1966, we also agree with the dissenting member of the board that Miller must be deemed to have suppressed the invention under 35 U.S.C. § 102(g) through the behavior of his assignee. Perforce, the decision of the board must be reversed. We reach both issues, since without an actual reduction to practice there is no invention in existence which can be abandoned, suppressed, or concealed under § 102(g). Bogoslowsky v. Huse, 142 F.2d 75, 31 CCPA 1034 (1944).

I

Peeler argues that the one successful vibrating probe test relied upon by Miller to establish an actual reduction to practice was preliminary in nature and failed to show that the invention would work "as intended to work in its practical contemplated use, i. e., as an aircraft hydraulic fluid * * *." Peeler also urges us to find that a single successful test is insufficient to establish reproducibility of results and that the probe test was an abandoned experiment because Miller lacked conviction of success. Connected with these arguments is Peeler's contention that Miller is attempting to prove actual reduction to practice nunc pro tunc by relying on an affidavit by his colleague Fairing which, Peeler submits, presents Fairing's opinion as of 1973, when it was executed, and not at the time of Miller's reduction to practice in March 1966.

We note that the counts are not directed to aircraft hydraulic systems, which are special environments with high speed flow and extremes of temperature and pressure causing accelerated wear of valves and other hydraulic system components, but to hydraulic systems generally. Thus Miller need show only that his invention is suitable for reducing cavitation damage in any hydraulic system. See Steinberg v. Seitz, 517 F.2d 1359, 1363 (CCPA 1975), and cases cited therein. We find Peeler in a peculiarly unfavorable position to assert that the vibrating probe test is insufficient to prove actual reduction to practice. The only tests disclosed in Peeler's examples illustrating his invention are probe tests, and it is these...