Smith v. Stone, Patent Appeal No. 8209.

• Decision Date: 12 February 1970
• Docket Number: Patent Appeal No. 8209.
• Citation: 420 F.2d 1065,164 USPQ 453
• Parties: Edwin J. SMITH, Appellant, v. Morris D. STONE, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

164 USPQ 453, 420 F.2d 1065 (1970)

Edwin J. SMITH, Appellant, v. Morris D. STONE, Appellee.

Patent Appeal No. 8209.

United States Court of Customs and Patent Appeals.

February 12, 1970.

Shanley & O'Neil, Washington, D. C., attorneys of record, for appellant; Paul T. O'Neil, Washington, D. C., of counsel.

Robert E. Isner, Keith, Johnston, Isner & Eslinger, New York City, for appellee; Edwin R. Hutchinson, Washington, D. C., Roger M. Rathbun, New York City, of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judge, and MATTHEWS, Senior Judge, United States District Court for District of Columbia, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Patent Interferences, adhered to on reconsideration, involving appellant's application¹ and appellee's patent² and awarding priority to the senior party, the patentee Stone.

The subject matter involved in the interference relates to the manufacture of tinplate, i. e., thin strips of steel coated with tin, which are used primarily as a fabrication material for containers (the so-called "tin can"). More specifically, the invention pertains to a method of making "very thin tinplate," in which the steel substrate has a thickness in the order of one-half the thickness of the steel substrate of conventional tinplate. Such "ultra-thin" tinplate, is important, according to the patent disclosure, "In view of the fact that normal gauge tinplate * * * is not economically suitable for all phases of the container market."

Claim 3 of the Stone patent, which forms the single count of the interference, reads as follows:

1. In a method of producing very thin tinplate characterized by the fact that when the strip is in a metallurgically soft condition, it is maintained relatively thick, and when in its very thin condition the strip is metallurgically very hard, whereby in both conditions the strip lends itself to ready handling, transferring and processing with minimum losses due to breakage, bending, tearing and the like, and further characterized by the fact that all of the rolling processes are performed prior to the tinning of the strip, the steps including:

cold reducing the strip to a gauge of at least .006 inch and greater which will be relatively thick as compared with the desired final gauge thereof;

continuously annealing the strip while in its relatively thick condition;

cold reducing the soft annealed relatively thick strip at least 30% and greater to its final thin gauge to impart a substantial hardness and strength to the strip,

and as a final step tinning the strip in its thin hard condition.

The issues in this case center around construction of the language of the count and whether appellant's proofs establish conception and reduction to practice of the invention defined by the count.

The patentee Stone relied upon his filing date in the proceedings below. Appellant took testimony and relied upon evidence relating to certain operations performed on two steel coils as proof of both conception and reduction to practice of the invention before Stone's filing date. A complete understanding of the problems associated with this proof requires a further explanation regarding the technology involved.

The method for producing conventional, or standard gauge tinplate, has apparently remained essentially unchanged for over 30 years. It begins with the formation of a steel strip having a thickness roughly ten times the final thickness of standard gauge tinplate, which strip is known as the "hot band" since it is produced on a hot reduction mill. This "hot band" is cleaned and then processed into conventional tinplate by performing the following steps, essentially in the order named:

(1) the band is cold reduced in a single step to the final thickness required;

(2) the cold reduced steel strip produced is then annealed, a process which relieves internal stresses and makes the steel softer and less frangible;

(3) the annealed strip is then tinplated, e. g., by passing it through an electrolytic tinning solution.

The record shows that the annealing step is accomplished conventionally in two different ways; "box" or "batch" annealing, wherein the steel strip, after it has been cold reduced and cleaned, is rolled into coils and heat treated statically for extended periods of time, and "continuous" annealing, wherein the steel is displaced in web form at relatively high speeds through a furnace....