Rainer v. Unger

• Decision Date: 25 June 1964
• Docket Number: Patent Appeal No. 7102.
• Parties: William C. RAINER, Joseph G. Germak, James P. Hamilton, Arthur W. Sloan, William D. Stewart and Karl A. Schellenberg, Appellants, v. Harold W. UNGER and Donald H. Zipper, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

142 USPQ 23, 333 F.2d 244 (1964)

William C. RAINER, Joseph G. Germak, James P. Hamilton, Arthur W. Sloan, William D. Stewart and Karl A. Schellenberg, Appellants, v. Harold W. UNGER and Donald H. Zipper, Appellees.

Patent Appeal No. 7102.

United States Court of Customs and Patent Appeals.

June 25, 1964.

Cushman, Darby & Cushman, Alvin Guttag, Washington, D. C., for appellants.

Fred S. Lockwood, Chicago, Ill., for appellees.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

WORLEY, Chief Judge.

This appeal is from a decision of the Board of Patent Interferences holding that Rainer et al. cannot make the two counts of the interference.

The invention resides in the incorporation of silicone in a gasket-forming composition of vinyl chloride resin before curing. The counts read:

"1. A gasket forming composition comprising a vinyl chloride base resin and quantities of lecithin and silicone fluid, the latter ingredients being present in sufficient amounts so as to be present on the surface of a gasket formed from said composition and provide lubrication thereto.

"2. A gasket forming composition comprising a vinyl chloride base resin and a quantity of silicone fluid, the latter ingredient being present in a sufficient amount so as to be present on the surface of a gasket formed from said composition and provide lubrication thereto."

The gasket provides for a controlled frictional seal between a closure cap of the screw-on type, lug or screw securement, and a container such as a glass jar or bottle. The purpose of incorporating silicone in the gasket is to provide adequate sealing while preventing seizure of the cap to the container after it is rotated into sealing position. The silicone remains after the gasket-forming composition is cured and provides a lubricating coating or film on the sealing surface so that sticking of the gasket to the container is avoided.

The interference arose when Rainer copied claims 1 and 5 from the Unger patent. Although the Unger application matured to a patent first, Rainer was the first to file. Accordingly, Unger, as the junior party and having failed in his preliminary statement to allege any date prior to Rainer's filing date, was ordered to show cause why judgment should not be entered against him. In response Unger moved to dissolve the interference on the ground that Rainer is not entitled to make either of the counts on the basis of the disclosure of his patent application. That motion was denied by the Primary Examiner who said:

"It is urged in support of the motion that Rainer et al cannot make the counts that the common invention in issue was not originally disclosed by them. But a sufficient answer to this argument appears to be afforded by referring particularly to the specification page 39 lines 27 and 28 and page 40, lines 1 to 15 and page 25, lines 3 to 6 and 26 and claims 1, 9 and 66 of the application of Rainer et al. If Counts 1 and 2 in issue are broader than the `plastisols\' which form the basis of so large a part of the discussion in the specification of the party Unger et al, it is no less true that the `plastisols\' of claims 1, 9 and 66 `read on\' said Counts 1 and 2, in spite of the fact that the filler member of said claim 66 is `inorganic\'."

It is held that Rainer et al. can make the counts.

Unger then requested a final hearing on the matters raised by his Motion to Dissolve.

On August 29, 1962, the Board of Patent Interferences reversed the examiner, stating:

"In deciding whether the Primary Examiner reached the correct conclusion * * *, we must consider the applicable law, which requires an applicant who copies a claim from a patent to show that he is entitled to make the claim; which resolves doubts against him; and which requires that the disclosure should be clearer than to suggest that one skilled in the art might formulate the composition in a particular manner. * * *"

The board proceeded to consider the subject matter of Rainer's application, including those parts of his specification referred to by the examiner, and concluded:

"* * * We find no disclosure in the Rainer application of a composition comprising silicone fluid, either in the amount specified or any other amount, or in conjunction with lecithin or separately."

Rainer asserts that the board erred in its interpretation of his disclosure. Those parts of his application which, Rainer contends, disclose incorporating silicone into the gasket-forming composition, read:

"To prevent sticking to the mold, conventional release agents, such as Dow Cornings\' Silicone release fluid (a polymethylsiloxane) can be employed. Alternatively, stearic acid can be incorporated into the plastisols at concentrations of 2.5% to 5%, to prevent sticking of plastisol to the hot mold without affecting adhesion of the foam to the Unichrome-coated shells adversely. Butyl stearate was similarly effective as a mold release agent and, like stearic acid, is nontoxic, but stearic acid is preferred in its overall characteristics. For example, butyl stearate served

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