Raiche v. Foley, Patent Appeal No. 4307.

• Citation: 113 F.2d 497
• Decision Date: 30 September 1940
• Docket Number: Patent Appeal No. 4307.
• Parties: RAICHE v. FOLEY.
• Court: United States Court of Customs and Patent Appeals

113 F.2d 497 (1940)

RAICHE v. FOLEY.

Patent Appeal No. 4307.

Court of Customs and Patent Appeals.

July 8, 1940

Rehearing Denied September 30, 1940.

Karl Fenning, of Washington, D. C., for appellant.

Willis F. Avery, of Akron, Ohio (Hoke S. Woodruff, of Akron, Ohio, of counsel), for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

GARRETT, Presiding Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office, reversing the decision of the Examiner of Interferences, in an interference proceeding of which the latter tribunal said: "The subject matter in issue is a process which, as disclosed by the parties, finds specific application in the manufacture of integral one-piece distensible bag catheters."

The interference, which embraces seven counts (all being method counts), was declared between a patent No. 2,043,630, issued to Raiche June 9, 1936, upon an application filed November 9, 1935, and an application of Foley, filed October 1, 1936. The counts are identical with claims 5 to 11, inclusive, of the Raiche patent and were set forth as claims 5 to 11, inclusive, in Foley's application as filed.

Since Foley's application was filed after the patent to Raiche issued, the burden rested upon Foley to establish priority beyond a reasonable doubt.

A phase of the case relating to a question of practice and not involving the merits was brought before us by a former appeal and decided. See Raiche v. Foley, 103 F.2d 920, 26 C.C.P.A., Patents, 1235.

There has been injected into the present appeal a question relating to Raiche's right to amend his original reasons of appeal after the same had been perfected in the Patent Office. The question so injected was specially briefed by counsel for the respective parties, at the request of the court, it being determined that it would be taken in connection with the argument upon the merits, the necessity of its consideration by us being dependent upon the conclusion which we should reach respecting the merits upon the basis of the original reasons.

The patent to Raiche bears the broad title "Construction of Rubber Articles." The application of Foley is entitled "For Method of Making Rubber Articles."

The counts are quite broad, and the specific application of them to distensible bag catheters is determinable only from an inspection of the respective specifications. The Examiner of Interferences quoted counts 1 and 2 as typical, and we follow his example in that respect:

"1. The method of forming articles with wall recesses, comprising the steps of coating a form, placing a passageway form on the coated form, coating the first and second forms, locally treating the coated area about the end of the passageway form to prevent surface adhesion, again coating both forms and their coats, and removing both forms, whereby an integral article having a recess with a communicating passageway is obtained.

"2. The method of forming articles with wall recesses, comprising the steps of dipping a form in coating solution, placing a passageway form on the coated form, dipping the first and second forms, locally treating the coated area about the end of the passageway form to prevent surface adhesion, again dipping both forms and their coats, and removing both forms, whereby an integral article having a recess with a communicating passageway is obtained."

It will be observed that there is no mention of rubber in either of the above counts. It may be stated that the same is true of all the other counts except count 7, which reads: "7. The method of forming articles, comprising coating a form with a solution of rubber material, to form an initial coat, treating a local area of the initial coat to prevent surface adhesion, and again coating the coated treated form with a solution of rubber material, whereby an integral article with a recess results."

The board did not quote any count.

Both parties took testimony. We do not find in either of the decisions below any specific reference to the dates claimed in the respective preliminary statements. The Examiner of Interferences reviewed only the testimonial record filed on behalf of Foley, being of the opinion that it was unnecessary to consider the Raiche record in view of his holding that Foley "failed to establish inventive acts overcoming the record date" of Raiche.

The board held that Foley "had a conception as early as 1934" and that, in letters of March 25, 1935 and April 4, 1935 (hereinafter more particularly set forth) he "suggested the steps of the process." The board did not assign any date for Foley's reduction to practice, nor did it discuss the question of Foley's diligence. It may be said also that it did not discuss Raiche's record.

It appears that Dr. Foley is a surgeon specializing in the field of urology. In his preliminary statement he claimed conception of the invention "sometime in the early part of 1929" with reduction to practice "on or about September 15, 1931." It is clear that these claimed dates must be disregarded because whatever work Dr. Foley may have done at those times did not involve the process required by the counts.

The following statement from the decision of the Examiner of Interferences, which was not questioned in the decision of the board, is helpful in elucidating the history of Dr. Foley's activities: "It appears that in connection with certain cystoscopic procedures some difficulty is experienced in controlling post-operative hemorrhage and that for this purpose Foley attached a rubber bag to the lower end of the conventional catheter, which bag was inflated by means of a small auxiliary tube. The small inflated bag, pressing against the affected area, serves to check and control the flow of blood. Catheters of this type were not made commercially prior to 1935, and Foley made those which he used by an assembly method, thin rubber sheeting being cemented to the lower portion of a conventional catheter in the manner described in Foley's exhibit A."

We may say at this point that we have no doubt that Foley, probably as early as the dates named, recognized the desirability of having an improved catheter for use in his special field of practice, and that, from time to time, he gave some study and attention to the problem of producing such an instrument. His early efforts were to produce one by the "assembly" method, that is, by cementing rubber sheeting to the lower portion of a conventional catheter, and, even after he had learned, in 1932, the use of liquid latex for forming dipped rubber articles, he continued until 1935 trying to find a commercial manufacturer who could make a satisfactory catheter by the assembly method. This fact was regarded as significant by the Examiner of Interferences, who commented as follows: "If, in fact, Foley had seriously contemplated the making of hemostatic bag catheters by a dip method from latex or any other suitable form of rubber it does not seem reasonable that he should have failed to include such suggestion in these negotiations."

As has been stated, the board awarded Foley conception "as early as 1934," and the brief on his behalf before us does not seriously claim any date earlier than June, 1934. The award by the board and the claim of the brief is based upon the testimony of Dr. Ward L. Beebe and Dr. Phillip F. Donahue. The Examiner of Interferences made no specific reference to this testimony. We presume it to have been his view that the testimony did not establish conception as of that time, or that, if it did, Foley had failed to establish the requisite diligence. However that may be, he did not discuss the testimony and, for reasons which later will appear, we deem its discussion unnecessary here.

Another date of conception claimed on behalf of Foley in the brief before us is that of March 25, 1935, and the brief emphasizes this more strongly than it does the "as early as 1934" date awarded by the board. The claim for March 25, 1935, is based upon a letter written under that date by Foley to one R. W. Albright, general manager of American Anode, Inc., of Akron, Ohio, an organization, according to Albright's testimony, devoted to the development and research of latex compositions, latex processes, etc., including articles utilized in the surgical profession.

It appears that there had been some prior correspondence between Foley and Albright. In a letter dated March 16, 1935, Foley requested "a supply of latex rubber" solution, stating therein that he would appreciate any literature describing latex, particularly anything "bearing on production methods, curing and properties in general." It appears from Albright's testimony that a gallon of "standard American Anode mix" was sent on or about March 18, 1935, on which date Albright wrote him that it was being sent, adding, in substance, that the company would be pleased to work with him (Foley) on any problem he had in mind in which the company's experience and background might be of assistance in developing any particular rubber article.

The letter of Foley, under date of March 25, 1935, was in answer to the letter of Albright and, in view of the emphasis placed upon it, we quote its text in full:

"My dear Mr. Albright:

"It was a pleasure to have your curteous courteous and helpful letter of March eighteenth. For the past three or four years Mr. Wallerich of the V. Mueller Surgical Instrument Company of Chicago and I have been trying to find among the rubber manufacturers, something like your spirit of cooperation but without success — and so your letter is particularly gratifying. I certainly appreciate your offered assistance and taking you at your word I will tell you our problem — and now with confidence it will be worked out.

"We...