Squires v. Corbett

• Decision Date: 04 August 1977
• Docket Number: Patent Appeal No. 76-693.
• Citation: 560 F.2d 424
• Parties: Paul Herman SQUIRES, Appellant, v. Herbert O. CORBETT, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

560 F.2d 424

Paul Herman SQUIRES, Appellant, v. Herbert O. CORBETT, Appellee.

Patent Appeal No. 76-693.

United States Court of Customs and Patent Appeals.

August 4, 1977.

COPYRIGHT MATERIAL OMITTED

Richard L. Schwaab, Bacon & Thomas, Arlington, Va., attorneys of record, for appellant.

Stephen D. Murphy, Scully, Scott, Murphy & Presser, Garden City, N. Y., attorneys of record, for appellee.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and FREDERICK LANDIS, Associate Judge, United States Customs Court.

RICH, Judge.

This appeal is from the March 16, 1976 decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (board) awarding priority of invention as to the single count in interference No. 98,315 to senior party Corbett. We affirm.

Corbett is involved on application Serial No. 654,941, entitled "Method of Extruding Laminated Film," filed May 26, 1967, as a division of application serial No. 350,220, filed March 9, 1964, the latter hereinafter called the "parent application." These two applications have identical disclosures. Junior party Squires is involved on U. S. Patent No. 3,476,627, issued November 4, 1969, on application serial No. 542,066, filed April 12, 1966, entitled "Process for Coextruding Multiple-Layered Thermoplastic Sheeting." Both parties took testimony.

The Issue

Squires' patent claim 1 was copied exactly into Corbett's application and is the sole count in interference. It reads (emphasis ours):

1. A process for the extrusion of multiple-layered sheeting of thermoplastic resin, said process comprising the steps of

(a) joining in a tube, at least two laminar-flow streams of molten thermoplastic resin into a combined stream of molten thermoplastic resin which has a sharply defined juncture between the components of the combined stream,

(b) passing said combined stream of molten thermoplastic resin into a manifold of a sheeting extrusion die the juncture plane(s) between each of the individual molten thermoplastic resin components within the manifold being parallel to the principal direction of flow of the resin as it passes from the manifold and takes on the shape of sheeting, and

(c) whereby a multiple-layered sheeting wherein the individual layers of thermoplastic resin are of substantially uniform thickness over substantially all of the width of the sheeting is formed.

Squires concedes that Corbett was the first inventor of the subject matter described in the Corbett application but contends, in essence, that the invention so described is not the invention defined by Squires' patent claim 1. The issue was raised below by Squires' motion to dissolve under 37 CFR 1.231¹ alleging that since Corbett did not disclose the invention defined by the copied claim, Corbett had no "right to make" the copied claim. The motion was denied at final hearing, hence this appeal from the board's disposition of that ancillary issue.

The Disclosures

The Squires patent discloses extrusion processes for forming multiple-layer thermoplastic "sheeting"² such as that used as an interlayer in safety glass laminates. The process entails joining at least two streams of plastic extrudate in the inlet pipe upstream from the manifold of a sheeting die. As shown below in Fig. 1, two streams, 2 and 3, from extruders 1 and 1', are joined in a Y-shaped tube entering sheeting die 5. Squires requires the flow of the streams, where joined, to be laminar, that is, non-turbulent, so as to form a sharply defined juncture 4 between the layers. Fig. 1 is a schematic of the apparatus as seen from below. Fig. 2 shows the laminar sheet being extruded downwardly through lips 6. That two layers of non-uniform thickness (semi-circular in cross section) could be fed to a sheeting die and still produce a product of uniform layer thickness, as shown in Fig. 2, is alleged by Squires to have been unexpected.

Corbett discloses extrusion processes for making laminar "films," particularly thin films less than 10 mils thick which he distinguishes from "sheets." Such films may be used, for example, in packaging applications. In the extrusion process, streams of plastic extrudate are joined and laterally expanded, as in a fan-shaped die, prior to discharge. Like Squires, Corbett recognizes that the streams must be joined while in laminar flow to avoid mixing. Two basic embodiments are disclosed, the first involving joining two or more streams in a die having a tubular orifice formed between an internal mandrel and the die body so as to produce a tubular product. In the second embodiment, three or more streams are joined in a flat sheet extrusion apparatus. At the beginning of the Corbett specification, however, the invention is generically described as follows (emphasis ours):

This invention relates to * * * the production of laminated products wherein two or more overlying and coextensive fluid films are formed with laminar flow * * *. By laminar flow is meant the flow of two or more adjacent streams without turbulence so there is no mixing of the materials of the streams.

Corbett seems to rely on the disclosure of the sheet-forming embodiment to support the limitations of the copied claim.

In the flat sheet extrusion embodiment illustrated in Fig. 4, below, the outputs from two extruders are joined upstream from die lips 52 and 53. The extrudate from a first extruder 57 is split in "diverter plate" 62 into two streams which flow through channels 63a and 63b. These two streams are joined with the extrudate of a second extruder (not shown) which forms a centrally disposed layer when introduced through orifice 66 via channel 65 in diverter element 64 carried in plate 62. Joinder occurs in the passageway 51a in element 51. Additional layers may be added through additional orifices in the wall of passageway 51a, and the thickness of the layers may be varied by laterally varying the width and the location of the diverter and the size of orifice 66. As shown in Fig. 10, an enlarged fragmentary section of product, the illustrated sheet-extruding embodiment forms a three-layer structure. (The actual thickness of the composite film in Fig. 10 is stated to be 5 to 12 mils.)

Background

When Corbett first copied Squires' patent claim 1 during ex parte prosecution, the examiner, believing that the Corbett disclosure did not support the claim in a number of respects, rejected the copied claim under 35 U.S.C. § 112, first paragraph.³ The Board of Appeals reversed this rejection relying, at least in part, on the disclosure of the tubular extrusion embodiment to support various limitations in the copied claim. This interference was declared and, during the motions period, Squires made the aforementioned motion to dissolve.

The substance of Squires' attack on Corbett's right to make the copied claim may be summarized as follows:

(1) Squires' claim 1 cannot be construed so broadly that it reads on Corbett's film extrusion process because the claim would then be anticipated by a reference patent over which the claim was allowed;⁴ (2) Corbett does not disclose the formation of thick "sheeting," more particularly, sheeting in excess of 10 mils in thickness;

(3) Corbett discloses joining the streams within a rectangular die body rather than "joining in a tube" outside the die; and

(4) Corbett does not disclose joining two laminar flow streams but, instead, discloses joining three or more streams.

Squires additionally alleged, as part of his motion, that an incident of these deficiencies in Corbett's disclosure was to preclude Corbett's reliance on his parent application for an earlier effective filing date.

Decision on the motion was deferred until final hearing, as provided by 37 CFR 1.231(d),⁵ in view of the Board of Appeals decision, although the Board of Patent Interferences was not bound thereby. Sze v. Bloch, 458 F.2d 137, 59 CCPA 983, 173 USPQ 498 (1972).

The Board Opinion

The board treated Squires' motion as (1) a motion to dissolve based on Corbett's alleged failure to support the limitations of the copied claim in the instant application, and (2) a motion to deny Corbett the benefit of his parent application filing date based on the alleged absence from the parent of 35 U.S.C. § 112, first paragraph, support for the limitations of the copied claim as required by 35 U.S.C. § 120.⁶ The board noted that the parent and the application at bar are "substantially identical" and concluded that both motions turn on "whether Corbett discloses a species falling within the generic invention defined by the count." The board continued, saying:

A constructive reduction to practice of a species falling within a generic count constitutes a constructive reduction to practice of the generic invention. Den Beste v. Martin, 252 F.2d 302, 45 C.C.P.A. 798, 116 U.S.P.Q. 584 (1958). Our decision with respect to sufficiency of disclosure will apply equally to a motion for benefit of the parent as to a motion to dissolve as to the divisional.

The board found the copied claim to be unambiguous and, therefore, refused to construe its terms in light of Squires' specification, its prosecution history, or the references cited therein. While recognizing Corbett's primary concern with the formation of thin "film," the board held that Corbett's disclosed use of a "sheet extruding die" and Corbett's reference to the lamination of a number of films into a "single sheet" constituted a disclosure of "sheeting," thereby supporting the claim preamble. It was also noted that the definition of "sheeting" in the Squires patent overlapped the definition of "film" in the Corbett application and that Squires was, therefore, "estopped from urging a narrower meaning of the term."

Corbett was found to disclose "joining in a tube," as required by clause (a) of the count, in that the area below diverter element 64 formed by diverter plate 62 and die neck 51, although not of circular cross section, functions and may be described as a "tube."...