Strashun v. Dorsey

• Decision Date: 20 May 1965
• Docket Number: Patent Appeal No. 7362.
• Parties: Summer I. STRASHUN and William F. Talburt, Appellants, v. William R. DORSEY and Sumner I. Strashun, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

145 USPQ 476, 345 F.2d 201 (1965)

Summer I. STRASHUN and William F. Talburt, Appellants, v. William R. DORSEY and Sumner I. Strashun, Appellees.

Patent Appeal No. 7362.

United States Court of Customs and Patent Appeals.

May 20, 1965.

John W. Douglas, Asst. Atty. Gen., Alan S. Rosenthal, Washington, D. C., Samuel J. Heyman, Danbury, Conn. (Rubin Hoffman, Washington, D. C., of counsel), for appellants.

Carl Hoppe, James F. Mitchell, San Francisco, Cal., for appellees.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention in interference No. 91,305 to Dorsey and Strashun, the junior party.

The invention relates to a continuous process for dehydrating liquid or semiliquid concentrates of juices, for example, orange or other citrus juices, at high temperature under sub-atmospheric pressure. The process involves forming a thin film or web of concentrate on the surface of an endless metal belt which travels over and between a heated drum and a cold drum in an evacuated chamber. The web is preheated in increments from its point of application to the belt until it reaches the heated drum, such preheating being provided by radiant heaters distributed along its path of travel. Heat is also applied to the other side of the web after it passes over the heated drum by additional spaced radiant heating elements. The radiant heat, together with the sub-atmospheric pressure, causes vaporization of the liquid phase of the concentrate. The temperature of the radiant heating elements is maintained sufficiently high to cause puffing of the web and the temperature of the web is raised to a point where the puffed product begins to soften prior to collapse of the puffed structure. That point is called the "pseudo melting point." The web has the desired moisture content and is in puffed condition when it leaves the last radiant heater. Immediate cooling by the cold drum maintains the puffed condition.

Of the nine counts involved, 1, 4 and 7 are representative. Count 1 reads:

"In a continuous process for dehydrating a comestible concentrate consisting of passing said concentrate in a stream from an inlet point to a discharge point separated and entirely disassociated from said inlet point; subjecting said concentrate to sub-atmospheric pressure during its travel from said inlet point to said discharge point; forming said stream into a continuous web of uniform thickness after the commencement of its passage from said inlet point to said discharge point; subjecting said web to heat, puffing said web, and removing moisture from said web during a heating stage of its passage from said inlet point to said discharge point and until the moisture content of the web has been reduced to the desired level; thereafter rapidly cooling said web, as so dehydrated, during a cooling stage of its travel; and then discharging said web, as so dehydrated and cooled, from said discharge point; the improvement which includes: supplying heat to said web during said heating stage in sufficient quantity to maintain said web at its pseudo-melting point throughout at least the major portion of said heating stage."

Counts 4 and 7 differ from count 1 in the terminal portions beginning "the improvement which includes," and the terminal portions only of those claims are set out:

"4. * * *; the improvement which includes: subjecting said web to a plurality of discrete increments of radiant heat throughout the duration of said heating stage; and adjusting said discrete increments of radiant heat so as to maintain said web at the pseudo-melting point of said web throughout at least the major portion of said heating stage."

"7. * * *; the improvement which includes: subjecting both sides of said web to a plurality of discrete increments of radiant heat during said heating stage; and adjusting said discrete increments of radiant heat so as to maintain said web at the pseudo-melting point of said web throughout at least the major portion of said heating stage."

Each of the remaining counts is dependent on one of counts 1, 4 or 7.

The counts correspond to claims 1 through 9 of patent No. 2,825,653, issued to Dorsey and Strashun on March 4, 1958, on an application filed May 3, 1954, and assigned to Vacu-Dry Company. They were copied verbatim in Strashun and Talburt application serial No. 370,239, filed July 24, 1953, and assigned to the United States of America as represented by the Secretary of Agriculture. Thus Dorsey and Strashun are the junior party with the burden of proving priority by a preponderance of the evidence.

The Strashun named as co-inventor in both cases is the same person. In March of 1953 he was an employee of the Department of Agriculture working on the problem of dehydrating citrus juice products, particularly orange juice concentrates. Dorsey was an employee of Vacu-Dry Company which was also concerned with the same problem. Dorsey visited Chain Belt Company in Milwaukee from March 9 through 18 of 1953, utilizing equipment there for experiments on dehydration of orange juice concentrates. Strashun arrived at the Chain Belt Company on March 16, 1953, for the purpose of conducting tests of a continuous process for dehydrating orange juice and remained there until April 1, 1953. He observed some of Dorsey's tests on March 16 to 18 before carrying out his own tests thereafter.

Strashun subsequently resigned from the Department of Agriculture and accepted employment with Vacu-Dry commencing in May 1953. On April 29, 1953, before leaving the Department, Strashun signed the Strashun and Talburt application in interference. That application was at least partly based on his experiments at Chain Belt.

When the claims corresponding to the counts were first presented in the Strashun and Talburt application, they were rejected by the examiner on the ground the application did not support limitations requiring the supplying of heat to the web during the heating stage "in sufficient quantity to maintain said web at its pseudo melting point throughout at least a major portion of said heating stage." On appeal, the Board of Appeals reversed the rejection and the interference was then declared.

Neither party filed any motions during the motion period of the interference. The junior party took depositions of both Dorsey and Strashun and introduced exhibits. Strashun and Talburt also introduced exhibits but did not take any testimony themselves. A notebook in which Dorsey kept notes on his experiments at Chain Belt from March 9 through 18 of 1953 is in evidence as Dorsey and Strashun Exhibit 2. A notebook with data on the tests made by Strashun in March of 1953 constitutes Strashun and Talburt Exhibit A, while certain charts pertaining to those tests are Exhibits A-1 and B-1.

The Board of Patent Interferences handed down three opinions. In what may be called the main opinion, one member discussed the case in detail in holding for Dorsey and Strashun. A second member, in a specially concurring opinion, agreed "completely" with the first opinion but added comments on the applicability of Rule 258 of the Rules of Practice of the Patent Office. In a third opinion, the remaining board member dissented.

After stating "We are concerned only with what is factually disclosed in * * Strashun and Talburt's application," the majority opinion of the board commented on the question raised by the interference as follows:

"* * * we are presented with the problem not so much of determining who was the prior inventor but of who was the inventor of the invention in issue. We are not concerned primarily with the problem of the right to make claims directed to the subject matter disclosed in the involved application but we are concerned with the problem of who invented the subject matter set forth in the counts defining the invention in issue herein."

The testimony of Dorsey and Strashun was summarized by the majority as follows:

"* * * the uncontroverted testimony indicates that the invention as set forth in the counts was conceived solely by Dorsey as of March 12, 1953; that while Strashun saw Dorsey have a notebook like Exh. 2, he did not see its contents * * *; that Dorsey only mentioned that * * * he had an idea * * * on how to dehydrate orange juice but did not disclose any details to Strashun while both were at Chain Belt Company in March, 1953; that Strashun did not have a conception of the invention set forth in the counts when he executed the application jointly with Talburt on April 29, 1953; that Talburt never disclosed that invention to Strashun; that the invention set forth by the counts in issue was not inherent in the disclosure in the joint application; that the inventive process could not be satisfactorily practiced on the Chain Belt Company machine or that shown in the application; and that Strashun first was apprised of the inventive concept after he went to work for Vacu-Dry in May of 1953. Thus Strashun in effect has disclaimed conception or knowledge on his part of the invention in issue as of April 29, 1953, the date he executed the joint application with Talburt.

"In contrast to the above-noted testimony, we note that Strashun has not denied that he is a joint inventor with Talburt of the subject matter disclosed in their involved joint application, and that Talburt was not called to testify.

"Our review of the testimony of Dorsey and Strashun in conjunction with their respective notebook entries in Exhs. 2 and A (A-1 and A-2) reveals that there is insufficient basis to sustain a holding that conception of the invention in issue, as set forth in the counts herein, had been established thereby. Thus, our view is consistent with the position taken by the party Dorsey and Strashun in relying on the filing date of their application for the involved * * * patent for both conception and actual reduction to

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