Winkelmann v. Calvert, Patent Appeal No. 5084.

• Decision Date: 04 March 1946
• Docket Number: Patent Appeal No. 5084.
• Parties: WINKELMANN v. CALVERT.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

154 F.2d 1012 (1946)

WINKELMANN v. CALVERT.¹

Patent Appeal No. 5084.

Court of Customs and Patent Appeals.

March 4, 1946.

Zabel & Gritzbaugh, of Chicago, Ill. (Edward C. Gritzbaugh, Max W. Zabel, and Foster York, all of Chicago, Ill., of counsel), for appellant.

R. H. Waters, of Akron, Ohio, and Pennie, Davis, Marvin & Edmonds, of New York City (Clarence M. Fisher, of Washinton, D. C., and Frank E. Barrows and Roger T. McLean, both of New York City, of counsel), for appellee.

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

O'CONNELL, Associate Judge.

This appeal by Winkelmann from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention to Calvert involves not only the same parties but also the same general subject matter as Interference No. 74,296 previously involved and litigated to a final decision here in Calvert v. Winkelmann, 129 F.2d 536, 29 C.C.P.A., Patents, 1200.

More specifically, this interference was declared for the purpose of determining the question of priority of invention between Winkelmann's patent No. 2,115,055, granted April 26, 1938, on his application, Serial No. 55,413, filed December 20, 1935, and Calvert's application, Serial No. 133,172, filed March 26, 1937.

The invention relates to a composition of matter comprising as an essential ingredient a rubber hydrochloride intimately admixed with a portion of lead oxide (litharge) and was broadly disclosed and claimed both from a process and product standpoint in the prior interference. The present interference is for a species of that broader invention and is claimed solely as a product.

The counts here in issue read —

"1. A composition of matter comprising a rubber hydrohalide and litharge.

"2. A plastic composition comprising as an essential ingredient a rubber hydrochloride intimately admixed with a minor proportion of litharge.

"3. A plastic composition comprising as an essential ingredient a rubber hydrochloride intimately admixed with a minor proportion of lead oxide."

Three of the counts of the prior interference, 4, 15, and 18, read —

"4. The method of making a homogeneous, thermoplastic composition, adapted for molding, calendering and the like, which comprises milling a rubber hydrochloride with a substance from the group consisting of basic magnesium compounds, basic alkali earth metal compounds, basic alkali metal compounds, basic lead compounds and amines.

"15. The method of making molded and like formed products which comprises subjecting a substantially solid mixture of a rubber hydrohalide and a basic substance from the group consisting of basic magnesium compounds, basic alkali earth metal compounds, basic alkali metal compounds, basic lead compounds and amines to heat and pressure sufficient to flow the solid mixture into shape.

"18. The product obtained in accordance with the process substantially as defined in Claim 15, in which the selected basic substance is a basic inorganic compound."

Through assignment of the Calvert application to the Wingfoot Corporation, an affiliate of the Goodyear Tire & Rubber Company, and assignment of the Winkelmann patent to Marbon Corporation, the real parties in interest here, as in the prior interference, are Goodyear and Marbon.

The record submitted for review includes not only a transcript of the testimony and proceedings involved in the instant interference but also the entire record utilized by the court in reaching its decision in the prior interference.

Three patents to Winkelmann, No. 2,046,986, No. 2,075,251, and No. 2,075,254, from which all the counts of the prior interference were copied, were involved in that interference with Calvert's application which is again involved here.

The facts presented in the record of the prior interference, as pointed out in the decision of the court in Calvert v. Winkelmann, supra, established beyond any reasonable doubt that the invention of all the counts copied from the Winkelmann patents in the prior interference had their origin in Calvert when he was employed by Calvert's assignee, the Goodyear Tire & Rubber Company, and that the knowledge Calvert had acquired concerning the invention and its reduction to practice while working for Goodyear was surreptitiously sold by Calvert to Winkelmann's assignee prior to Winkelmann's earliest alleged date of conception. Upon the facts thus established, the court awarded priority to Calvert on all the counts there in issue.

Rule 43 of the Rules of Practice in the United States Patent Office, 35 U.S.C.A. Appendix, imposes a legal obligation upon an applicant who files two or more applications relating to the same subject matter of invention, "all showing but only one claiming the same thing," to provide in the applications not claiming the invention references to the application which does claim it.

The record here establishes that Winkelmann filed four applications relating to the same subject matter of invention, "all showing but only one claiming the same thing," and that three of such applications not claiming the invention and involved in the prior interference contained no reference whatever to Winkelmann's then pending and here involved application which did claim it. By the suppression of facts he was under a legal obligation to divulge, Winkelmann was thus enabled for the time being to avoid an interference with appellee who, as Winkelmann knew, had also disclosed but did not claim the same thing.

More specifically, the Winkelmann patent, No. 2,046,986, involved in the prior interference discloses but does not specifically claim, the subject matter of the counts of the present interference. These counts were submitted as claims in Winkelmann's then pending application, No. 55,413, which matured into the Winkelmann patent here in issue, and were rejected by the examiner on the ground that they were anticipated by Winkelmann's patent, No. 2,046,985, involved in the prior interference. Such claims were thereafter allowed, however, upon Winkelmann's amendment of application, No. 55,413, to provide that that application was "a continuation in part" of his application in patent No. 2,046,986.

Although Winkelmann at that time was involved in litigating the issue of priority submitted for decision in the copending interference, No. 74,296, he failed to move under the authority conferred upon him by Rule 109 of the Patent...