Thurston v. Wulff

• Decision Date: 29 November 1947
• Docket Number: Patent Appeal No. 5368.
• Citation: 35 CCPA 794,164 F.2d 612
• Parties: THURSTON v. WULFF et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

35 CCPA 794, 164 F.2d 612 (1947)

THURSTON v.WULFF et al.

Patent Appeal No. 5368.

Court of Customs and Patent Appeals.

November 29, 1947.

James Edwin Archer, of Stamford, Conn., for appellant.

Michael L. Looney, of Washington, D. C., for appellees.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

BLAND, Associate Judge.

The sole question involved in the instant appeal from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention of the single count in issue to appellees is whether or not there was, on the part of appellant, Thurston, timely reduction to practice.

There is no serious contention in this case that Thurston was not the first to conceive the invention and there is no claim by anyone that if Thurston did not reduce to practice he was diligent during the critical period.

The count in issue is as follows:

1. y-nitropimelic nitrile.

Testimony was taken by Thurston.Appellees relied upon their filing date — July 26, 1941.Thurston filed his application on December 30, 1941.

In view of our conclusion it will not be necessary to state all the facts disclosed by the record, but we shall set out the salient points thereof which we think necessary to a decision of the case.

y-nitropimelic nitrile is a compound which is sometimes referred to in the record as 3 nitro-1, 5 dicyano petane and may be prepared by reacting acrylonitrile with nitromethane in various solvents.

There is in evidence, as Thurston ExhibitNo. 12, a small bottle containing a sample of the compound which Thurston testified was prepared by him on April 5 and 6, 1939.The importance and significance of this exhibit will be commented upon later.The sample is a white, powdery, crystalline substance, having somewhat the appearance of salt.

Thurston has adduced the testimony of seven witnesses, all of whom were employees in various capacities of the American Cyanamid Company of Connecticut.In addition to Thurston, the witnesses testifying on behalf of the junior party were: Donald G. Patterson, John H. Fletcher, Margaret D. Humm, Thelma G. Bills(all of whom were chemists, the latter two being in the analytical laboratory), Robert C. Swain(director of the chemical research division), and James Edwin Archer(patent attorney for the company).

Thurston testified that he had been employed for seven years as a chemist for the American Cyanamid Company, the major part of his work there being in the field of organic nitrogen chemistry and in the field of amino aldehyde resins.Supporting his recital of events by entries in various notebooks, which were introduced in evidence as exhibits, Thurston stated that he first conceived the idea of reacting y nitro butyronitrile with acrylo-nitrile to form y-nitropimelic nitrile on March 22, 1939, and that he began the first preparation of y-nitropimelic nitrile on April 5, 1939, and completed it on April 6, 1939.According to his testimony, he prepared the compound by the reaction of nitro-methane and acrylonitrile in the presence of liquid ammonia, purified the same, and tested the purified product in various ways and determined its melting point.

Thurston identified Exhibit 12, referred to above, as being a sample of the y-nitropimelic nitrile prepared by him at that time and stated that the inscription on the label of the bottle — "XXX-X-X-XX,""M. P. 65-66°," and his name — was in his handwriting, and that the sample was placed in the bottle on April 10, 1939.Thurston testified that he sent a request for an analysis of a sample marked "XXX-X-X-XX" to Mr. W. H. Harding, who was the technical director of the Technical Service Division of American Cyanamid, and that it was the customary practice to route all requests for work through Mr. Harding.This request was made on or before August 2, 1939.Thurston identified a photostat of a report of the Micro Analytical Laboratory of the carbon, hydrogen, and nitrogen analyses of the sample submitted with his request mentioned above, and he testified that he received this report approximately August 12, 1939, and that the analyses prove that the compound was y-nitropimelic nitrile.Thurston stated that the bottle and its sample contents were returned to him after completion of the analyses and had been in his custody until he gave the same to Mr. Archer of the Patent Department.According to Thurston's testimony, Archer was present when he produced y-nitropimelic nitrile on April 5 and 6, 1939.

Archer testified by deposition, and from his testimony we quote the following pertinent portions:

"* * * deponent observed Dr. Thurston adding nitromethane to liquid ammonia contained in a Dewar flask which resulted in precipitation of some material within a short time.Thereafter Dr. Thurston added acrylonitrile to the contents of the Dewar flask and agitated the reacting mixture which was reddish in color.Shortly thereafter Dr. Thurston showed deponent the product which had been recrystallized from the reacting mixture previously observed, and this product was a white crystalline solid the crystals being rather fine needles;

"* * * the foregoing observations of Dr. Thurston's reaction of nitromethane with acrylonitrile in the presence of liquid ammonia and the product thereof took place in the Spring of 1939;

"* * * during the Summer of 1939 deponent requested Dr. Thurston to supply deponent the necessary details covering the reaction of nitromethane and other nitro-paraffins with acrylonitrile and the products produced according to that reaction for the purpose of preparing a patent application, and that at that time Dr. Thurston stated that he had never had the sample of white crystalline material which he had obtained by reacting nitromethane and acrylonitrile in liquid ammonid analyzed, and therefore, he thought that this should be done first in order to determine what he had obtained.In deponent's presence Dr. Thurston thereupon placed the white crystalline solid in a small sample bottle and inscribed the CodeNo. 230-1-6-66 of the preparation of his compound on a label together with the melting point which he had determined, and his name, and affixed the label to the bottle;

"* * * deponent believes and therefore avers that the bottle containing the white needle-like crystalline solid bearing a label having the Code No. `XXX-X-X-XX, M.P. 65-66°, Thurston' which has been introduced into evidence as Thurston ExhibitNo. 12 is the same bottle and contains the same material which was mentioned in the preceding paragraph."

Archer stated he was shown a report by the Analytical Division which purported to be an analysis of this sample and, according to Archer, Thurston stated this analysis showed that the white crystalline compound was y-nitropimelic nitrile.On cross-examination of Archer the following question and answer appear of record:

"XQ1.You state that on one occasion you saw Dr. Thurston react acrylonitrile with nitromethane in liquid ammonia.How did you identify these compounds?A.I did not analyze them.They were taken from bottles labelled in the customary fashion."

Swain testified that he was employed as a group leader in the Research Division of American Cyanamid and that Dr. Thurston was a member of the group under his direction in 1939.He stated that he knew that Thurston reacted acrylonitrile with nitromethane and the following is quoted from the cross-examination of this witness:

"XQ3.You mentioned that you knew that Dr. Thurston reacted acrylonitrile with nitromethane.Did you participate with Dr. Thurston in carrying out that reaction, and if so, to what extent?A.My participation in this particular reaction was mainly that of an onlooker.I was aware of the work being done and remember observing the apparatus during the course of the work."

Swain also testified on cross-examination that in reacting acrylonitrile and nitromethane three compounds theoretically might result, that is to say, "when there is no data to guide the conditions of the reaction, it could be expected that mixtures will result."

The testimony of Humm and Bills shows that they analyzed a compound in August, 1939, which was sent to them by Dr. Thurston.The report of this analysis, which they identified and which is in evidence as an exhibit, represents the results of a carbon, hydrogen, and nitrogen analysis on a sample of material marked "XXX-X-X-XX."

Patterson, another of the chemists employed by American Cyanamid, testified that y-nitropimelic nitrile was prepared in his laboratory as a result of a suggestion made to him by Dr. Thurston and that this material was made prior to September 28, 1939, by John Fletcher, a laboratory assistant employed there for the summer.Patterson further testified he had hydrogenated the product made by Fletcher, that he had purified and titrated the hydrogenated product to determine its amine number, and that the test showed the product to be a triamine of the expected composition.

Fletcher's testimony was to the effect that he received orders from Patterson to prepare y-nitropimelic nitrile from nitromethane and acrylonitrile and that he did not know what became of the material after he prepared it.

The board, in discussing the proof said:

"A summary of all this testimony indicates that Archer saw a process carried out which should allegedly result in the compound of the count.It has not been established that he saw the product isolated and purified.After the allege purified sample was shown to him by Thurston it apparently remained in Thurston's custody until some later...