Snitzer v. Etzel

• Decision Date: 30 November 1972
• Docket Number: Patent Appeal No. 8668.
• Citation: 175 USPQ 108,465 F.2d 899
• Parties: Elias SNITZER, Appellant, v. Howard W. ETZEL et al., Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

175 USPQ 108, 465 F.2d 899 (1972)

Elias SNITZER, Appellant, v. Howard W. ETZEL et al., Appellees.

Patent Appeal No. 8668.

United States Court of Customs and Patent Appeals.

September 14, 1972.

Petition for Clarification Denied November 30, 1972.

Donald R. Dunner, Lane, Aitken, Dunner & Ziems, Washington, D. C., attys. of record, for appellant. Anthony M. Lorusso, William C. Nealon, Southbridge, Mass., of counsel.

T. Hayward Brown, Washington, D. C., Vito J. DiPietro, Reston, Va., attys. of record, for appellees.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and ROSENSTEIN, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This is an appeal from the decision of the Board of Patent Interferences awarding priority of invention as to the two counts in issue to the junior party Etzel et al. from whose patent, U.S. Patent No. 3,028,009, issued September 25, 1965, on an application filed April 30, 1962, the counts were copied. Appellant is involved on his application¹ filed January 16, 1962, as a continuation-in-part of an application² filed October 27, 1961. Neither party took testimony, and the award of priority rested, therefore, on the sufficiency of senior party appellant's disclosure to support the counts. The board held that appellant "has no right to make the counts here involved." We reverse and remand for the reasons explained below.

The counts are directed to the activation of a glass laser with trivalent ytterbium ions. It appears that lasers operate by exciting the electrons of suitable ions to a higher than normal energy level. Excitation is induced by bombarding the ions with light energy, and the essential characteristic of lasers is that the ions spontaneously fluoresce in their excited state. A laser device depends upon a laser-active ion or atom and a laser-active host medium. Appellant states that the earliest laser-active host was gaseous. The experience of workers in the art with gas lasers suggested the need for a solid laser. A ruby laser was the first reported solid laser, and experience with it demonstrated disadvantages attendant the use of a crystalline solid. What followed was the development of lasers using a noncrystalline host medium—glass. Both of the counts at issue in this case are drawn to a laser wherein the host medium is glass and the laser-active ion is trivalent ytterbium.

Count 1 is representative of the counts and reads as follows:

1. In a laser, a solid luminescent sensitive element of optical regenerative configuration and consisting essentially of a clear glass activated with trivalent ytterbium ions to absorb optical pumping energy in the near infrared region at wavelengths of from 914 to 974 mu and exhibit stimulated emission of radiation in the near infrared region in a waveband of about 6 mu width which has its optical center at 1.015 microns.

Count 2 differs only to the extent that the host medium is defined as "clear silicate glass." Count 2 presents no separate issue to the court, and the counts therefore stand or fall with count 1.

We think the issues on appeal can best be introduced by reproducing the board's findings and conclusions in pertinent part as follows:

1. Etzel et al. (Etzel) assert that Snitzer does not have an adequate disclosure to support the specific limitations of the two counts.

2. Snitzer * * * sets out various types of glass and transparent plastics which may be used in the laser.

3. * * * He lists fourteen materials which may be used as active laser ingredients among which is listed trivalent ytterbium.

4. On page 28 of his specification Snitzer states—"While various rare earth and other laser materials have been mentioned, for a more detailed examination of the energy levels of such materials reference is made to D.S. McClure, `Electronic Spectra of Molecules of Ions in Crystals\', Part II (Spectra of Ions in Crystals) Solid State Physics, No. 9, page 399 (1959)."

5. On pages 30 and 31 of his specification Snitzer states that the pumping light source should have its energy concentrated in the absorption bands of the laser material being used.

6. The Snitzer application is quite specific as to the glass neodymium laser.

7. In his brief Snitzer further refers to prior art publications relative to the absorption characteristics of various rare earth metals including ytterbium.

8. Based primarily upon items (1) to (7) above Snitzer asserts that his disclosure is adequate to teach one skilled in this art to make the subject matter of the counts.

9. Etzel asserts that the disclosure of Snitzer is indefinite, ambiguous and speculative because the statement in his specification that the ions may be used separately or in various combinations gives rise to over 87 billion possible variations * * *.

10. Etzel supports the assertion in (9) by referring to an amendment filed April 28, 1966 * * * wherein Snitzer states that trivalent cerium and trivalent terbium (materials listed among the fourteen named in the specification) are not known to lase in a glass host. This amendment refers to an affidavit under Rule 132 by Snitzer filed concurrently.

11. In the abovementioned affidavit Snitzer as an expert in the field corroborates the statement made in the amendment. Snitzer further states * * * —

The terbium and cerium activated calcium-fluoride host laser material of patent no. 3,079,347 is not pertinent to a laser using a glass-like host material and simply would not teach the suitability of these rare-earth ions for use in a glass-like host material. In this respect, it is known that the effect of the particular host material on the active laser ingredient makes it quite difficult, if not impossible to predict whether any given activating material or materials suitable for use in a crystalline host material will or will not be suitable in a glass-like host material to attain lasering action. (Emphasis ours.)

12. Etzel has filed under Rule 282, three Snitzer publications dated October 1966, September 1967 and September 1966 respectively to show that even as late as 1966 Snitzer was aware that not all of the ions listed in his patent application were operative laser ingredients in a glass. This assertion seems to be based in part upon the first sentence of the October 1966 article which states—"The IONS which have been made to lase in glass are Nd3+, Yb3+, Er3+, and HO3+" with the implication that the others named in the Snitzer specification are not.

Conclusions

The Snitzer specification sets forth detailed disclosure as to the neodymium glass laser but no details as to any other combination. It is merely speculation as to what one skilled in the art might do or might not do with these broad generalities. Such speculation does not provide the clear support for claims copied from a patent. Citation omitted. We have found nothing in the specification that would lead one to select the ytterbium glass laser of the counts rather than the admittedly inoperative cerium. It is apparent from Snitzer\'s affidavits and the various publications of record that to build an operative laser requires more disclosure than setting forth two groups of randomly combinable substances together with knowledge existing in the art at the time the

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