Swain v. Crittendon, Patent Appeal No. 7131.

• Decision Date: 11 June 1964
• Docket Number: Patent Appeal No. 7131.
• Citation: 51 CCPA 1459,332 F.2d 820
• Parties: Charles B. SWAIN and Albert G. Schuessler, Appellants, v. Bob C. CRITTENDON, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

51 CCPA 1459, 332 F.2d 820 (1964)

Charles B. SWAIN and Albert G. Schuessler, Appellants, v. Bob C. CRITTENDON, Appellee.

Patent Appeal No. 7131.

United States Court of Customs and Patent Appeals.

June 11, 1964.

Roy G. Story, Edward T. McCabe, Chicago, Ill., for appellants.

Ellsworth H. Mosher, Washington, D. C. (Sidney A. Johnson, Dallas, Tex., of counsel), for appellee.

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

SMITH, Judge.

This appeal by Swain et al. from an award of priority to Crittendon raises the single issue of whether Crittendon is entitled under 35 U.S.C. § 120 to rely upon the filing date of a parent application as establishing priority of invention. Resolution of this issue requires 1) a determination of whether the parent application contains in fact a disclosure of the subject matter of the counts, and 2) if so, a further determination of whether such disclosure is legally sufficient to support an award of priority.

Some historical background is required in order to understand the issue and how it arises here. Appellants' patent,¹ from which the present counts were copied, matured from an application² filed in the Patent Office on October 18, 1954. Appellee's application,³ which is presently involved in this interference, was filed on September 8, 1958 as a continuation-in-part of an earlier filed application, the Crittendon parent,⁴ filed April 8, 1954.

Upon declaration of the interference, appellants were made senior party on the basis of their October 1954 filing date. Appellee moved to shift the burden of proof on the ground that he was entitled to the April 1954 filing date of the Critendon parent application under section 120. The examiner denied appellee's motion to shift, holding that the counts were not properly supported by the disclosure of the Crittendon parent application.

On appeal, the Board of Patent Interferences overruled the examiner on the question of whether there was proper support in the Crittendon parent application, and held that the motion to shift the burden of proof should have been granted. Since appellants took no testimony, but elected to rely on their October 1954 filing date, the board awarded priority to appellee. On reconsideration, the board adhered to its decision without change.

The invention defined by the counts relates to water-in-oil emulsions having application in well drilling, and to methods of drilling oil bearing formations using said emulsions as the drilling fluid. The drilling fluid contains solid particles dispersed or suspended therein and polyvalent metal salts of sulfated sperm oil as the emulsifying agent. The counts relate to a well drilling and completion fluid (counts 1 and 2) and to a method of drilling wells using such fluid (counts 3-6). The broadest counts of the two groups are counts 1 and 3, which read as follows:

"1. A fluid having application as a well drilling and completion fluid comprising a water-in-petroleum oil emulsion, solid particles dispersed in said fluid, and an emulsifying agent comprising a polyvalent metal salt of sulfated sperm oil." Emphasis added.

"3. A method of drilling oil-producing formations with a rotary bit comprising circulation of a drilling fluid to said bit and then to the well surface, said drilling fluid comprising a water-in-oil emulsion with finely divided solids suspended therein and an emulsifier comprising a sulfated sperm oil salt of a bivalent metal." Emphasis added.

The controversy here has its origin in the language we have emphasized in the above counts.

The disclosure in the Crittendon parent application, insofar as the emulsifier utilized in the drilling fluid is concerned, is broad and comprehensive. However, the four examples of the parent application each specify the use of a "sodium salt of sulfonated sperm oil." Emphasis added. As pointed out by the board:

"* * * The point of controversy has arisen because `sulfonated\' rather than `sulfonated\' sperm oil is described in the parent case. The difference resides in the fact that in a sulfonate (in strict chemical parlance) the sulfur atom of the sulfonic acid group (SO3H) is bonded directly to a carbon atom whereas in the case of the sulfated oils the sulfur atom is linked to carbon through an oxygen atom. The compounds are different, the former being a sulfonic acid (or salt) and the sulfate being an ester, either whole or half, or a salt thereof."

Thus it is appellants' position, rejected by the board, that the Crittendon parent application in disclosing "sulfonated sperm oil" will not support an award of priority of a count which calls for "sulfated sperm oil." We do not agree.

The emulsifier is described generically in the parent application as "a sulfuric acid derivative of an aliphatic ester." The parent specification further states that "By sulfuric acid derivative is meant the product obtained by reaction between any aliphatic ester and a sulfonating or sulfating agent."

The examiner and the board seemed to agree that the sulfuric acid derivative resulting from reacting sulfuric acid with sperm oil is a sulfate addition product and would be so regarded by persons skilled in this art. As the examiner commented:

"* * * it is well known in the art that the products formed by the `sulfonation\' reaction of sulfuric acid and unsaturated vegetable oils (i. e. sperm oil) are not true sulfonates but rather sulfate addition products even though such products are variously termed `sulfonated\' oil."

And, in referring to the above statement of the examiner, the board said:

"The term `sulfonated\' is often loosely used to refer to a sulfated oil. See, for example, paper No. 10 in the parent case, which includes a reproduction of a brochure by Swift and Co., (the senior party\'s assignee) wherein the term `sulfonated\' is applied to sulfated sperm oil. See also Organic Chemistry (Fieser and Fieser, 3 Ed., p. 412) where at the middle of the page it is stated:

"The first synthetic compounds to compete with soap * * * are sulfonated (actually sulfated) oils made by treating unsaturated oils * * * with concentrated sulfuric acid. (our emphasis)

As appears in this standard work (also at the middle of the same page) `sulfonated castor oil,\' otherwise known as Turkey-red oil, is actually sulfated and not sulfonated. The Condensed Chemical Dictionary (5th Ed., published by Reinhold Pub. Corp.) under `sulfonated oils\' at page 1047 states with reference to animal or vegetable oils which have been treated with sulfuric acid:

"Chemically this trade term, sulfonated, is incorrect since the oils are sulfated (contain the -OSO2OH group) and not the -SO2OH group)."

We think, therefore, that the Board of Patent Interferences was correct in stating:

"Accordingly, we are satisfied without doubt that sulfated sperm oil is supported in the parent disclosure. Swain et al. have presented nothing convincing to the contrary to overcome the prima facie effect of the Primary Examiner\'s ruling reproduced above. See Henning v. Hunt, 1955 C.D. 376 (390), 42 CCPA 1064 223 F.2d 926, 106 USPQ 307. * * *"

The further question remains as to whether such disclosure is legally sufficient to support an award of priority.

It is appellants' position that the Crittendon parent application fails to support the counts in that it disclosed and claimed not only a salt of a sulfonated (sulfated) sperm oil, but also a salt of a sulfonated aromatic hydrocarbon in admixture therewith. While this is true, the six counts involved herein are broad counts which do not exclude the presence of other ingredients in the composition. The broad "comprising" and "containing" terminology...