Sockman v. Switzer
| Decision Date | 22 June 1967 |
| Docket Number | Patent Appeal No. 7796. |
| Citation | 379 F.2d 996,154 USPQ 105 |
| Parties | Loy W. SOCKMAN and Elliott W. Brady, Appellants, v. Robert C. SWITZER and Richard A. Ward, Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Foster York, Chicago, Ill. (Benton Baker, Chicago, Ill., of counsel), for appellants.
Albert L. Ely, Jr., Cleveland, Ohio, for appellees.
Before WORLEY, Chief Judge, and RICH, SMITH and ALMOND, Judges.
This appeal is from a decision of the Board of Patent Interferences, one member dissenting, awarding priority to Switzer and Ward, hereafter Switzer. The interference involves Switzer application Serial No. 484,319 484 filed January 26, 1955, as a continuation-in-part of Serial No. 606,708 606 filed July 23 1945.1 In issue are five counts copied from patent No. 2,667,070 to to Sockman and Brady, hereafter Sockman, issued January 26, 1954, on an application filed March 26, 1949. Switzer was made senior party on the basis of the filing date of the parent 606 application. Since neither party presented evidence to show conception or reduction to practice prior to their respective filing dates, Switzer was awarded priority.
The controlling issue on appeal is whether the Switzer 606 application supports the counts. This issue turns on a question of semantics, i. e., the meaning to be ascribed to "a relatively non-volatile liquid consisting essentially of an oxygen-containing organic liquid," which originated in the Sockman patent and was copied therefrom by Switzer.
In determining the meaning of this language in resolving the issue here, we shall give initial consideration to its meaning in the context of the Sockman patent in which it originated. Cf. Liebscher v. Boothroyd, 258 F.2d 948, 46 CCPA 701; Rajchman v. Lockhart, 339 F.2d 233, 52 CCPA 853.
As stated in the Liebscher case, 258 F.2d at 951, 46 CCPA at 705:
* * * the words in which a claim is couched may not be read in a vacuum. One need not arbitrarily pick and choose from the various accepted definitions of a word to decide which meaning was intended as the word is used in a given claim. The subject matter, the context, etc., will more often than not lead to the correct conclusion. * * *
Switzer urges that we should have recourse to the Sockman patent only if the meaning of the claim is ambiguous.2 We think a sufficient answer to this position is to be found in the various meanings assigned to this language in the present controversy as will be apparent from the following discussion.
The controversy between the parties is entering its thirteenth year. The interference was first declared on May 23, 1955 but was dissolved by the Board of Patent Interferences on the grounds that the 606 application did not support the counts; and further, that a Canadian patent corresponding to the Sockman patent issued more than one year prior to the filing of the Switzer application 484 and was a statutory bar to the latter application.3 Upon resuming ex parte prosecution the examiner's rejection of the 484 application on the above grounds was affirmed by the Board of Appeals. Switzer then brought an action in the District Court for the District of Columbia under 35 U.S.C. § 145. That court, in Switzer v. Watson, D.C., 183 F.Supp. 467, overruled the board and held on the evidence presented by Switzer that the 606 application did support the counts. As a result of this decision, the interference was redeclared with Switzer designated senior party. The Board of Patent Interferences subsequently awarded priority to Sockman on the ground that Switzer's filing of the 484 application with claims corresponding to the counts was not timely under the provisions of 35 U.S.C. § 135(b).
In Switzer v. Sockman, 333 F.2d 935, 52 CCPA 759, this court reversed the board, finding that the 484 application was timely filed. The court also noted that Sockman had presented evidence and arguments on the issue of whether the disclosure of the 606 application supports the counts, stating, 333 F.2d at 943, 52 CCPA at 769:
We think * * * that the board, in discharging its duty of determining priority here, has the responsibility of expressly determining whether the earlier application of Switzer et al., serial No. 606,708, supports the counts. While that determination must be made in the light of the district court\'s decision, recognition that Sockman et al. had no opportunity to participate in the trial before that court requires that the board also shall consider such arguments and additional evidence as are now properly presented by Sockman et al.
On remand, the board awarded priority to Switzer and this appeal followed.
The counts in issue relate to a method of detecting flaws in bodies, such as metal parts for machines. The method involves a sequence of steps, the first of which is coating the body with a penetrant liquid containing a dye. This liquid flows into the flaws. The liquid remaining on the surface of the body is then removed leaving the penetrant liquid in the flaws. Thereafter a developer, which may be in the form of chalk in suspension in a volatile liquid, such as ethyl alcohol, is then applied to the surface and the volatile liquid is allowed to evaporate leaving an absorbent chalk film on the surface. This film absorbs the colored penetrant liquid which was previously trapped in any flaws and the resultant colored area in the chalk film reveals the presence of the underlying flaws.
Count 1, which corresponds to Sockman's claim 4 is representative of the counts in issue and is most clearly understood when broken into its component parts as follows:
It is apparent from the record that the novelty of the invention in issue does not lie in the manipulative steps of the method per se but resides instead in the composition of the penetrant liquid dye solution. Referring to par. (1) of the above count, it will be seen that the dye solution is made up of three materials: 1) a dye, 2) a volatile liquid, and 3) a relatively non-volatile liquid. The non-volatile liquid is further defined as having a higher surface tension than the volatile liquid and as "consisting essentially of an oxygen containing organic liquid." The penetrant liquid consists of the volatile and relatively non-volatile portions. As the volatile liquid evaporates from a flaw, it will tend to leave a higher proportion of the non-volatile liquid in the remaining penetrant and increase its surface tension with the result that it will more readily exude from the flaw in the subsequent treatment defined in par. (3) of the above count.
Switzer, having copied the claims from the Sockman patent, has the burden of proving his right to make the claims. Segall v. Sims, 276 F.2d 661, 47 CCPA 886; Smith v. Wehn, 318 F.2d 325, 50 CCPA 1544. A similar burden of proof applies where one relies on an earlier application for support in order to obtain the benefit of its filing date. See Guyer v. Cramer, 318 F.2d 757, 50 CCPA 1386. For a construction of an application which meets a count to be acceptable, it must be the "necessary and only reasonable" construction. Binstead v. Littmann, 242 F.2d 766, 44 CCPA 839; Guyer v. Cramer, supra.
The application of those principles in the present case must be made in the light of the decision of the district court in Switzer v. Watson, supra, in which the court found that the Switzer application 606 supports the claims which are the counts in this interference. The situation is adequately summed up in our instructions to the board on remand, quoted supra.
In the presently appealed decision each of the members of the Board of Patent Interferences wrote a separate opinion. Two of these opinions hold that the 606 application supports the counts. The third and dissenting opinion holds that it does not. The majority members considered that the language of the 5 counts, while broad, was not ambiguous. Thus they did not resort to the Sockman patent, in which they originated, to construe them. The dissenting member, on the other hand, found it necessary to resort to the file history of the patent in order to determine the meaning of the term in issue from the context in which it originated. He, therefore, construed the counts in the light of the Sockman specification and the prosecution of the application which resulted in the issuance of the Sockman patent. He also discussed and relied upon the substantial amount of evidence which Sockman had introduced in the interference and which was not before the district court in Switzer v. Watson. Analyzing that evidence at length and comparing it with the evidence before the district court, the dissenting member concluded that the present record presented an entirely different picture than was before the district court and that this compelled a finding that the Switzer 606 application does not support the counts.
Our consideration of the record leads us to conclude, on the basis of the evidence, that the dissenting board member was correct and the decision below must be reversed.
The question whether Switzer 606 supports...
To continue reading
Request your trial
-
DeGeorge v. Bernier
...claim came. See, e.g., Burson v. Carmichael, 731 F.2d 849, 852, 221 USPQ 664, 666 (Fed.Cir.1984); Stockman v. Switzer, 379 F.2d 996, 54 CCPA 1563, 1568, 1000, 154 USPQ 105, 106-07 (1967). Here, the count is arguably ambiguous with respect to whether it includes a word processor (or typewrit......
-
Harrington Manufacturing Co., Inc. v. White, 71-2032.
... ... v. Burnside Steel Foundry Co., 7 Cir., 1943, 132 F.2d 812, 814; Sockman" v. Switzer, 1967, 379 F.2d 996, 1002, 54 C.C.P.A. 1563; Barrett v. United States, 1968, 405 F.2d 502, 507, 186 Ct.Cl. 210. 6 ... 475 F.2d 798 \xC2" ... ...
- Application of Barker
- Union Oil Co v. Atlantic Richfield Co.