Phillips Petroleum Company v. Ladd

• Decision Date: 25 July 1963
• Docket Number: Civ. A. No. 2096-61.
• Citation: 219 F. Supp. 366
• Parties: PHILLIPS PETROLEUM COMPANY, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

219 F. Supp. 366

PHILLIPS PETROLEUM COMPANY, Plaintiff, v. David L. LADD, Commissioner of Patents, Defendant.

Civ. A. No. 2096-61.

United States District Court District of Columbia.

July 25, 1963.

Paul L. Gomory, J. A. Young, L. M. Oberlin, Washington, D. C., Sidney Neuman, Donald A. Peterson, Chicago, Ill., for plaintiff.

Clarence W. Moore, Solicitor, Washington, D. C., for defendant.

JACKSON, District Judge.

This is an action brought pursuant to 35 U.S.C. § 145, praying this Court to adjudge that plaintiff is entitled to receive a patent defined by two claims which were rejected by the Board of Appeals of the United States Patent Office.

The applicants are David R. Smith, and Robert P. Zelinski, employees of plaintiff at the time of their invention. The application, Serial No. 578,166, filed April 16, 1956, entitled "Process and Catalyst for Production of Rubbery Polymers" was assigned to plaintiff.

All of the 15 process claims were allowed, and the issue here relates to product claims 17 and 19, reading as follows:

"17. A rubbery polymer of 1,3-butadiene characterized by at least 85 per cent cis 1,4-addition."

"19. A rubbery polymer of 1,3-butadiene in which the polymer is formed and characterized by cis 1,4-addition, trans 1,4-addition and 1,2-addition of the butadiene, at least 85 per cent of the polymer being formed and characterized by cis 1,4-addition."

The primary Examiner rejected the involved claims over either of the Greene or Binder references, and also as unduly broad in that it disclosed as a minimum at least 85% cis 1,4.

The Board of Appeals in its decision affirmed the rejections of the Examiner. However, it did not sustain the objection on the breadth of the claims for the reason that, in its opinion, the disclosure amply supported the claim for cis 1,4 additions above 85% as a critical low element.

The references relied upon are as follows:

Greene Patent No. 2,762,790 Dated: September 11, 1956 Application dated: December 26, 1952 An article by John L. Binder Entitled: "Microstructures of Polybutadienes and Butadiene-Styrene Copolymers" Vol. No. 46 — Industrial and Engineering Chemistry Pages — 1727-1730 (August 1954)

The Greene patent, all claims of which are for process, is entitled "Polymerization of Aliphatic Conjugated Diolefins". One of its objectives is "to provide a new and practical process for the polymerization of aliphatic conjugated diolefins, particularly 1,3 butadiene, and certain derivatives thereof, to high molecular weight, solid, elastic polymers characterized by the presence of a predominant proportion of 1,4-linked, cis-configurational monomer units." Both tribunals of the Patent Office held the involved claims to be unpatentable over that patent as being different in degree rather than in kind.

Dr. Binder, author of the second refererence, in the acknowledgment paragraph at the end of the article, notes that his description of the work therein was part of the "Government synthetic rubber program". From that article seemingly little was known about the molecular structure of the matters with which the article was concerned. Contained in the conclusion is the statement that "the results of the analysis reported here show that while the amount of cis 1,4 addition increases with increasing temperature of polymerization, a polybutadiene containing 100% cis 1,4, or trans 1,4 addition cannot be made at any practical temperature".

Both the tribunals of the Patent Office have held that the expression "100% cis" is such a disclosure as to render the claims herein unpatentable.

It was brought out at the trial that at the beginning of World War II there was a great shortage of natural rubber in the United States, and its principal source of that material was unavailable. At that time natural rubber had been almost universally used in automobile and truck tires, as well as in many other products. Consequently, that condition triggered the efforts of our most experienced and skilled scientists and technologists to produce a product that would approach as nearly as possible the properties of natural rubber.

It appears clearly from the evidence here that the product defined by the involved claims is new, and possesses vastly superior characteristics to any known synthetic rubbers, and that it conformed to the desired characteristics discussed hereinbefore.

There are two issues for decision: (1) Did the Board of Appeals correctly decide that the polymer defined in the involved claims is not different in kind over that which could be produced in the prior art, but merely differs in degree, and (2) was it correctly decided by the Board that the radically different and improved properties and characteristics accomplished in the polymer of plaintiff were foreseeable?

During the trial several witnesses highly skilled in the technology and chemistry of the art appeared on behalf of plaintiff, and many paper and physical exhibits were received in evidence.

It appears that technologists, under expert supervision, attempted to produce the product contained in Example 1 of the Greene patent. That is the only example in which the cis appears. From the specification there appears to be no indication as to how the process of Example 1 might be performed. However, from the evidence it is indicated that technologists for plaintiff attempted, to the best of their ability, to pursue what they deemed to be the proper process for producing the material which the specification sets out. After repeated experiments it was shown that the product resulting therefrom was a soft, sticky, semi-solid, impractical substance, utterly unfit for use in heavy duty truck tires.

At the trial it appeared that the test material of the Greene patent was compounded in a standard tire tread recipe, and the test results were compared with those of the involved polymer. The results demonstrated a showing of very poor material resulting from the Greene process, and, furthermore, in the testimony with respect to the tests, it was stated that such material possessed scarcely any rubber characteristics, and was not an acceptable synthetic rubber.

It seems clear to the Court from the evidence at the trial that Dr. Binder's article was a report concerned with an analyses of the molecular structure of a great number of synthetic rubbers, and that the article was principally devoted to relating the structures and conditions under which the polymers were...