Pingree v. Hull

• Decision Date: 26 June 1975
• Docket Number: Patent Appeal No. 74-623.
• Citation: 518 F.2d 624
• Parties: Samuel J. PINGREE and George A. Batman, Appellants, v. Henry E. HULL, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

518 F.2d 624

Samuel J. PINGREE and George A. Batman, Appellants, v. Henry E. HULL, Appellee.

Patent Appeal No. 74-623.

United States Court of Customs and Patent Appeals.

June 26, 1975.

John D. Pope III, St. Louis Mo., attorney of record, for appellants.

Roland H. Shubert, attorney of record, for appellee. Joseph A. Hill and Martin Avin, Washington, D.C., of counsel.

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

MILLER, Judge.

The senior party, Pingree and Batman (Pingree),¹ appeals from the decision of the Patent and Trademark Office (PTO) Board of Patent Interferences awarding priority of the invention described in four counts to the junior party Hull.² We affirm.

The invention deals with adhesive removal of guard hairs from fur seal skins, leaving the fine fur fibers intact. The fine fur, which is covered and protected by the longer and coarser guard hairs, is the part of the skin prized by furriers and their customers. Count 1 describes the invention:

A process for removing guard hair from a fur seal skin without substantial removal of fur therefrom, said process comprising applying a gripping substance to the guard hair while avoiding substantial contact between the gripping substance and the fur, and parting the skin from the gripping substance, said substance, upon parting, pulling guard hairs out of the skin and leaving the fur on the skin.

Counts 2-4 add limitations immaterial to the issues before us.

Two issues are presented: first, whether Hull's application supports the counts; second, whether Pingree abandoned or suppressed the invention within the meaning of 35 U.S.C. § 102(g). During the motion period and at final hearing below, Pingree raised other issues that the board found against him. Although Pingree's reasons of appeal touch on these issues, he argues only the support and abandonment issues here and is deemed to have abandoned the unargued points. In re Wiechert, 370 F.2d 927, 936, 54 CCPA 957, 968 (1967).

The interference was declared after Hull copied, in modified form, claims 1-4 of the Pingree patent. Pingree moved to dissolve the interference on the ground that the Hull application had no support for the limitation "applying a gripping substance to the guard hair while avoiding substantial contact between the gripping substance and the fur." The motion was denied by the primary examiner. Thereafter the parties took testimony and filed briefs.

Pingree's preliminary statement alleged an earliest date of actual reduction to practice of February 6, 1957. Hull's corresponding alleged date was February 3, 1966. Before the board, Hull conceded that Pingree was first to reduce the invention to practice—as early as the date alleged in his preliminary statement. Hull's position was that, by waiting over ten years from the date of actual reduction to practice before filing an application, Pingree had abandoned the invention and was therefore not entitled to an award of priority.

In awarding priority to Hull, the board found that Hull's application supported the counts:

As was pointed out in the decision of the Primary Examiner, the basic purpose of both parties is to remove the undesirable coarse guard hairs from the fur seal skin leaving the fine fur on the skin in an undamaged condition as removal of the fine fur hair or injury thereto would decrease the value of the finally processed fur skin. Substantial contact between the gripping substance and the fine fur hair would result in the removal of some of the fine fur when the gripping substance and its backing is separated from the skin, which would be contrary to the purpose of avoiding injury to the fine fur. We also note that original claim 1 of the Hull application is for "A method for selectively removing guard hairs from animal pelts." That this is done "selectively" agrees with the concept that the gripping substance is not in contact with the fine fur (avoiding substantial contact between the gripping substance and the fur) as fine fur is not removed with resultant injury to the quality of the finished skin.

The board agreed with Hull that Pingree had suppressed and abandoned the invention and awarded priority to Hull, notwithstanding Hull's concession that Pingree had actually reduced the invention to practice some nine years earlier. Pingree argued that the delay in filing was to await the results of testing a machine to practice the process. However, the board noted that many hundreds, possibly thousands, of fur seal skins were adhesively unhaired between February 6, 1957, and June 1961; that a disclosure dated November 14, 1961, containing drawings and descriptions that are essentially those in the Pingree application was supplied to a patent attorney on March 13, 1962; that the machine being tested was not the apparatus disclosed in the patent; that the counts are directed to a process carried out many times between December 1956 and June 1961; and that it was only after receiving information that an opponent had entered the field of adhesive unhairing that Pingree decided to file a patent application.

OPINION

Relevant portions of Hull's disclosure relating to the important part of the disputed limitation, "while avoiding substantial contact between the gripping substance and the fur," read as follows:

Briefly, the present invention involves a process of selectively removing guard hairs from animal pelts containing both fine fur and coarse guard hairs by contacting the fur pelt with an adhesive coated substrate and then pulling it away. We have found that using this method of removal, guard hairs are extracted without damage to the underlying fur fibers.

. . . . .

Previous operations directed toward removal of guard hairs from pelts have been varioulsy termed plucking, picking, clipping, shearing and unhairing. All have involved the use of machines designed to selectively extract the guard hairs or to cut them below the surface of the underlying fur. None have proven successful in avoiding injury to the underfur.

We have found that selective guard hair removal can be achieved by pressure contacting the pelt containing guard hairs with a substrate having an adhesive unhairing system. Using this technique only the guard hairs are removed.

. . . . .

Adhesives used in the present invention are the type generally known as packaging adhesives, that is, ones that produce moderate to high strength in shear, tension and peel. It is desirable that the adhesive used have a high degree of tackiness characteristic of pressure-sensitive adhesives. Useful adhesives include not only water soluable sic forms but also hot-melt and solvent-dilutable compositions.

. . . . .

The above composition is merely an example of a polyvinyl acetate emulsion. We have found that similar emulsions not containing plasticizers or additives may also be used. The combination of substrate and adhesive should be one in which the adhesive is adhered to the substrate more strongly than to the guard hairs. This will avoid separation of adhesive from the substrate upon stripping of the pelt.

Guard hair removal is accomplished when a substrate coated with adhesive is pressed against the pelt and then pulled away. . . . This action, well known to doctors and patients who have removed adhesive bandages, creates a pull on the guard hairs . . . causing their removal as they adhere to the surface . . . of the substrate. The result is the exposure of the fine fur. . . .

. . . . .

The arrangement shown . . . is merely one form of a continuous system. Other features may be incorporated into the system including . . . means to vary the pressure and time and angle of contact as well as the speed of the pelt . . . or substrate. . . .

Example

An untreated fur seal pelt

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