Reese v. Hurst

• Decision Date: 15 October 1981
• Docket Number: Appeal No. 81-525 to 81-527.
• Citation: 661 F.2d 1222
• Parties: Stanton L. REESE and Herbert M. Katz, Appellants, v. Fred J. HURST and David J. Crouse, Appellees, v. Tadeusz Karol WIEWIOROWSKI and David James Miller, Appellees. Stanton L. REESE and Herbert M. Katz, Appellants, v. Fred J. HURST and David J. Crouse, Appellees. Stanton L. REESE and Herbert M. Katz, Appellants, v. Tadeusz Karol WIEWIOROWSKI and David James Miller, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

661 F.2d 1222

Stanton L. REESE and Herbert M. Katz, Appellants, v. Fred J. HURST and David J. Crouse, Appellees, v. Tadeusz Karol WIEWIOROWSKI and David James Miller, Appellees.

Stanton L. REESE and Herbert M. Katz, Appellants, v. Fred J. HURST and David J. Crouse, Appellees.

Stanton L. REESE and Herbert M. Katz, Appellants, v. Tadeusz Karol WIEWIOROWSKI and David James Miller, Appellees.

Appeal Nos. 81-525 to 81-527.

United States Court of Customs and Patent Appeals.

October 15, 1981.

Harvey B. Jacobson, Jr., D. Douglas Price, Washington, D.C., John D. Nies, Arlington, Va., of counsel, for appellants.

Jack Q. Lever, Jr., Irving Barrack, Judson R. Hightower, Washington, D.C., for Dept. of Energy.

Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER, and SMITH,^* Judges.

MILLER, Judge.

These consolidated appeals from the decisions of the Patent and Trademark Office Board of Patent Interferences ("board") involve three separate parties and three separate interferences: (1) a continuation-in-part application of Stanton L. Reese and Herbert M. Katz ("Reese") filed December 2, 1970, Serial No. 94,594, and their parent application, Serial No. 882,808, filed December 5, 1969. These applications are assigned to Uranium Recovery Corporation ("URC"); (2) A reissue application of Fred J. Hurst and David J. Crouse ("Hurst") filed January 9, 1974, Reissue Serial No. 432,002, covering Patent No. 3,711,591 granted January 16, 1973, on Serial No. 53,058 filed July 8, 1970. Both the patent and the reissue application are assigned to the United States Department of Energy; (3) A patent granted to Tadeusz Karol Wiewiorowski and David James Miller ("Wiewiorowski") on June 5, 1973, Patent No. 3,737,513, filed July 2, 1970, Serial No. 51,947. This patent is assigned to Freeport Minerals Co. We affirm.

BACKGROUND

Reese, the junior party, and Hurst, the intermediate party, took testimony to establish dates of invention earlier than their respective filing dates. The senior party, Wiewiorowski, took no testimony to establish a date of invention earlier than the filing date, but took testimony in rebuttal to the priority case of Reese.

In all three interferences the board denied Reese's 37 CFR 1.231 motion for the benefit of the December 5, 1969, filing date of the parent application on the basis that the application failed under 35 U.S.C. § 112, first paragraph, to support the count in each interference; and Reese was designated the junior party, based on the December 2, 1970, filing date of the continuation-in-part application.

With respect to Appeal No. 81-525 (" '525"), the board, in awarding priority to Hurst, determined that Hurst overcame Wiewiorowski's filing date by proving actual reduction to practice of the count on June 13, 1969, and that Reese failed to prove an alleged actual reduction to practice on May 29, 1969, or August 3, 1969.¹ The board also determined that Hurst proved diligence from prior to the Wiewiorowski filing date of July 2, 1970, to Hurst's filing date, July 8, 1970; that, although Reese conceived the invention no later than May 28, 1969,² their failure to establish a reduction to practice prior to Hurst's June 13, 1969, reduction to practice, mooted the issue of diligence. In response to Wiewiorowski, the board further determined that Reese did not derive the invention from Hurst.

In Appeal No. 81-526 (" '526"), the board awarded priority to Hurst on the same basis as in '525.

In Appeal No. 81-527 (" '527"), the board awarded priority to Wiewiorowski based on Reese's failure to prove their alleged dates of actual reduction to practice and on the failure of their parent application to support the count in interference.

THE INVENTION

The invention in all three interferences involves a process for the extraction and stripping of uranium from wet-process phosphoric acid. Wet-process phosphoric acid is produced in fertilizer plants by digesting phosphate rock with sulphuric acid. As produced, it contains small quantities of uranium on the order of about 100-200 parts per million ("ppm").

The uranium in the wet-process phosphoric acid is first extracted into an organic extractant comprising a dialkylphosphoric acid ("DEPA") and a trialkylphosphine oxide ("TOPO") dissolved in a water-immiscible solvent, such as kerosene. At the time the present invention was alleged to have been made, this organic extractant was well-known for its ability to extract uranium from wet-process phosphoric acid. The organic extractant has a strong affinity for uranium in the +6 valence (hexavalent) state (U+6), but a very low affinity for uranium in the +4 valence (tetravalent) state (U+4).

Once the uranium has been extracted from the wet-process acid into the organic extractant, it is stripped from the extractant with a phosphoric acid strip solution containing from about 40% to 100% by weight phosphoric acid (H3PO4) having dissolved therein ferrous ion (Fe+2).

The counts in interference are set forth below. In '525:

Process for obtaining uranium values from an extractant comprising a dialkylphosphoric acid and a trialkylphosphine oxide dissolved in a water-immiscible organic solvent which comprises stripping the extractant with an aqueous phosphoric acid solution containing from about 40 to 100% by weight H3PO4 having dissolved therein divalent iron.

In '526:

A process for the recovery of uranium from a wet-process phosphoric acid solution derived from the acidulation of uraniferous phosphate ores which comprises contacting said solution with an organic extractant consisting essentially of di(2-ethyl-hexyl) phosphoric acid and trioctylphosphine oxide dissolved in an organic diluent, reductively stripping the extractant of uranium with a strip solution in which ferrous ion is used to reduce uranyl ions in the extractant to uranous ions in the strip solution, and disengaging the strip solution from the organic phase.

In '527, count 3 is illustrative:

Process for obtaining uranium values from an extractant comprising a dialkylphosphoric acid and a trialkylphosphine oxide dissolved in a water-immiscible organic solvent wherein said uranium values in said extractant are in a hexavalent oxidation state, which comprises stripping the extractant with a solution consisting essentially of aqueous phosphoric acid containing from about 40 to 100% by weight H3PO4 and having dissolved therein an amount of divalent iron effective to cause said uranium values to pass from said extractant into said solution, said process further characterized in that (a) effective stripping of the extractant is the result solely of the presence of the divalent iron in the stripping solution and (b) the uranium values which pass into said solution remain dissolved in said solution.

ANALYSIS

The principles of law involved in this case are clear and well-settled. It is only the number and complexity of various facts and arguments which cause difficulty. The junior and intermediate parties, Reese and Hurst,³ had the burden of overcoming Wiewiorowski's filing date with corroborated evidence. Rodin v. Spalding, 49 CCPA 870, 872, 297 F.2d 256, 257, 132 USPQ 285, 286 (1962).

A corroboration analysis involves a reasoned examination and evaluation of all the pertinent evidence bearing on the credibility of the inventor. Mann v. Werner, 347 F.2d 636, 640, 146 USPQ 199, 202 (CCPA 1965); see Gianladis v. Kass, 51 CCPA 753, 757, 324 F.2d 322, 325, 139 USPQ 300, 303 (1963).

In recent years, this court, by adopting a "rule of reason," has eased the requirement of corroboration with respect to the evidence necessary to establish the credibility of the inventor. E. g., Mattor v. Coolegem, 530 F.2d 1391, 189 USPQ 201 (CCPA 1976); Anderson v. Pieper, 58 CCPA 1221, 442 F.2d 982, 169 USPQ 788 (1971); Berry v. Webb, 56 CCPA 1272, 412 F.2d 261, 162 USPQ 170 (1969). However, adoption of the "rule of reason" has not altered the requirement that evidence of corroboration must not depend solely on the inventor himself. As this court said in Mikus v. Wachtel, 542 F.2d 1157, 1161-62, 191 USPQ 571, 575 (CCPA 1976):

That courts must review the record as a whole and must apply a rule of reason, when evaluating corroborative evidence of actual reduction to practice, does not dispense with the requirement for independent corroboration. Emphasis added.

Independent corroboration may consist of testimony of a witness, other than the inventor, to the actual reduction to practice or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor. Thurston v. Wulff, 35 CCPA 794, 801, 164 F.2d 612, 617, 76 USPQ 121, 126 (1947). Accord, Gortatowsky v. Anwar, 58 CCPA 1266, 442 F.2d 970, 170 USPQ 41 (1971); Miessner v. Hoschke, 131 F.2d 865, 55 USPQ 221 (D.C.App.1942).

In an initial, broad attack on the board's decisions, Reese points out that two "rule of reason" cases cited by the board, Grasselli v. Dewing, 534 F.2d 306, 189 USPQ 637 (CCPA 1976), and Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980), "applied to large organizations which had organized research facilities to perform their research projects." Reese asserts that the board penalized them simply because they had no such research program; that "URC was a fledgling company with no laboratory facilities, no employees and limited financial resources"; that "Reese and Katz could not afford the luxury of having each and every step of their work independently corroborated by a third party"; and that "there is no reasonable basis for a rule of law which benefits larger organizations which can afford organized research facilities and penalizes private individuals and newly formed, fledgling companies, which cannot." However, the basis for the rule of law involved here is simply the paramount public policy of preventing fraud in patent procurement. Berry v. Webb, supra, 56 CCPA at 1279, 412 F.2d at 267, 162 USPQ at 174. That policy applies regardless of the...