Switzer v. Watson
| Decision Date | 31 March 1960 |
| Docket Number | Civ. A. No. 185-58. |
| Citation | 125 USPQ 48,183 F. Supp. 467 |
| Parties | Robert C. SWITZER and Richard A. Ward, Plaintiffs, v. Robert C. WATSON, Commissioner of Patents, Defendant. |
| Court | U.S. District Court — District of Columbia |
Larson & Taylor, Washington, D. C., Ely, Pearne & Gordon, and Albert L. Ely, Jr., Cleveland, Ohio, for plaintiffs.
Clarence W. Moore and Joseph Schimmel, United States Patent Office, Washington, D. C., for defendant.
This is an action pursuant to 35 U.S.C. § 145 asking the court to authorize the defendant to grant a patent to plaintiffs on their patent application, Ser. No. 484,319, filed January 26, 1955, entitled "Penetrant Inspection Methods of Flaw Detection."
The application in suit contains five claims copied from patent No. 2,667,070 issued to Sockman and Brady January 26, 1954, plaintiffs' claims 1-5 corresponding, respectively, to claims 4, 5, 6, 7, and 9 of that patent.
The Patent Office presents two issues to the court:
(1) That Canadian patent No. 490,080 which issued January 27, 1953 and corresponds to the U. S. Sockman et al. patent, is a statutory bar under 35 U.S. C. § 102(a) or (b).
(2) That no patent can issue to plaintiffs on the application in suit because it would constitute double patenting by reason of the issuance on June 24, 1958, of patent No. 2,839,918 to Robert C. Switzer.
(1) The statutory bar issue
The resolution of this issue depends on whether the claims in suit are entitled to the filing date of a parent application, Ser. No. 606,708, filed July 23, 1945, by Ward and Switzer, of which the application in suit is a continuation-in-part. This question arises because the application in suit, which admittedly supports the claims, contains a page of disclosure (page 19) additional to what is contained in application Serial No. 606,708. Plaintiffs assert and defendant denies that the "entire page was added in the present application to point out how the seven examples (which are common to the two applications) do inherently support the claim language." Further consideration of this issue of inherency, if that is the issue, requires an understanding of the subject matter claimed.
The invention is a method of detecting surface flaws in bodies such, for example, as machine parts and involves coating the body with a dye-containing penetrant which gets into the flaws, wiping the penetrant off of the surface, depositing on the surface a so-called developer such as a suspension of talc in alcohol, letting the alcohol evaporate to leave a white absorbent film on the surface and then watching for spots of color to develop. This will happen if there has been a flaw in which some of the penetrant was trapped because the talc will absorb it and become colored by the dissolved dye, thus revealing the flaw. Plaintiffs' claim 1, which is claim 4 of the Sockman et al. patent, reads as follows:
"The method of inspecting a part for surface defects which comprises applying to a surface of said part a solution of a dye in a penetrant liquid consisting of a volatile liquid and a relatively non-violatile liquid having a higher surface tension than said volatile liquid, said relatively non-volatile liquid consisting essentially of an oxygen-containing organic liquid, removing penetrant liquid from the surface to permit evaporation of part of the volatile liquid from the penetrant liquid remaining in the defect whereby there is an increase in the surface tension of the liquid in said defect, and depositing on said surface a layer of finely divided penetrant liquid absorbing material of a color contrasting with that of said dye whereby penetrant liquid will be absorbed in said deposit to form a visible trace."
The issue here is whether this and the other similar but more limited claims are supported by the specification of the 1945 application, Serial No. 606,708. In other words, are they supported without recourse to the matter added in the application at bar? If the parent case disclosure supports the claims, then plaintiffs are entitled to its 1945 filing date and the Sockman et al. Canadian patent issued in 1953, which is the sole reference on this issue, is not a statutory bar.
The novelty of the instant invention lies not in the manipulative steps of the process but in the claimed composition of the penetrant liquid, both the steps per se and the use of "developers" being known. The penetrant liquid, as the above claim shows, is a three-component liquid. It consists of a volatile liquid, a relatively non-volatile liquid, and a dye. The non-volatile liquid must have a higher surface tension than the volatile liquid and consist essentially of an oxygen-containing organic liquid. When such a penetrant liquid is left in a surface defect such as a crack, the more volatile liquid tends to evaporate at the surface, leaving a higher proportion of the less volatile component which increases the surface tension of the penetrant. This appears to promote exudation of the penetrant from the flaw and its absorption by the developer reveals the flaw, in a known manner, through the coloration of the developer residue by the dye.
To further develop the issue, the most specific definition of the penetrant is that contained in claim 3 (Sockman et al. claim 6) which includes the following:
"* * * a solution of a dye in a penetrant liquid consisting of 50% to 75% volatile portion having a relatively low surface tension as compared to dibutyl phthalate and from 50% to 25% of a relatively non-volatile portion consisting essentially of an oxygen-containing organic liquid having a higher surface tension than said volatile portion * * *."
Compared to claim 1, it will be observed that claim 3 is more specific in calling for percentages of volatile and non-volatile portions of the liquid and in relating the surface tension of the volatile portion to that of dibutyl phthalate, a compound used by Sockman et al. but not mentioned in plaintiffs' 1945 application. At the same time the language is different in that claim 1 refers to a penetrant liquid consisting of a volatile and a non-volatile liquid, whereas claim 3 refers to the volatile and non-volatile portions of the penetrant liquid. In this particular, claim 2 is like claim 1 and claims 4 and 5 are like claim 3. I mention this difference in connection with a point made by the board that under plaintiffs' claims the second liquid component "must be liquid prior to compounding the penetrant liquid which includes both liquids." Emphasis mine. Certainly there is no such requirement to be found in claims 3, 4, and 5. As plaintiffs have pointed out, the claims do not call for oxygen-containing organic compounds and a liquid meeting the claim limitations could consist of a solid compound dissolved in a solvent. Nor do I see that claims 1 and 2 which call for a "relatively non-volatile liquid consisting essentially of an oxygen-containing organic liquid" impose any such requirement. This is a minor matter, however, in view of the main issue in this phase of the case, the disposition of which renders it unimportant. But it is necessary to know that the board did take that position on the construction of the claim language.
A great deal of confusion seems to have been engendered in the prosecution of the application in suit by an apparent assumption on the part of the Patent Office that the applicants were relying on page 19 of the instant application, which was added to the disclosure of the 1945 parent application and about which questions arose as to whether it was "new matter." An interference was declared with the Sockman and Brady U. S. patent No. 2,667,070 which is the counterpart of the Canadian patent asserted as an alleged statutory bar. Sockman et al. moved to dissolve and the primary examiner granted the motion on the ground that applicants could not rely on the 1945 application and hence Sockman et al. foreign patents issued more than a year before the filing of the instant application were statutory bars, making the counts unpatentable to the applicants. The examiner stated that the added matter on page 19 "forms the basis for the proposed counts for interference as set forth in claims 1 to 5 of this case." In the ex parte prosecution following dissolution of the interference the applicants were in the position of trying to persuade the examiner to reverse the decision made in the interference that they were not entitled to the 1945 filing date. Naturally, he declined to do so. He reiterated that his reasons had been stated in the interference but in his "Final" action he undertook to summarize their "salient features." I quote them to show some of the errors in his thinking. He said:
My emphasis except the last.
This was in reply to the contention that the seven examples of penetrant liquids in the parent case, which are identical with the seven examples in the instant application, met the terms of the copied claims. The question was, and is, whether they do in fact, not whether the specification said that an oxygen-containing liquid contained...
To continue reading
Request your trial
-
Sockman v. Switzer
...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......
-
Switzer v. Sockman
...of Appeals sustained the primary examiner's final rejection. However, in an action under 35 U.S.C. § 145, the district court in Switzer v. Watson, 183 F.Supp. 467, held that Switzer et al. were "entitled to rely as to all of claims 1-5 on the filing date of application Serial No. 606,708 an......
- Mitchell v. Hill & Hill Truck Line, Inc.
-
In re Mlot-Fijalkowski
...with dye chemistry problems is evident from the content of earlier litigation concerning the Sockman patent. Switzer v. Watson, 183 F.Supp. 467, 125 U.S.P.Q. 48 (D.D.C.1960). Given the complexity of dye chemistry problems associated with the flaw inspection art, it would appear that applied......