Despite the voluminous record and briefs which we have been here required to consider, the single comparatively simple issue on this appeal is that of priority of invention of a process for producing titanium metal which is defined in the single count as follows:
The Board of Patent Interferences after a thorough consideration of the extensive record, and what appears to have been a careful and judicious consideration of the adversary contentions, awarded priority to the senior party, Slatin.
We agree with the Board of Patent Interferences that the decision on the priority issue is essentially a factual determination as to which the junior party Alpert has the burden of proof. For the reasons hereinafter stated, we agree with the Board that Alpert did not sustain the burden of proof required of a junior party so that on the present record the senior party Slatin is entitled to the award of priority.
The history of the present interference is both lengthy and complex. Insofar as this history has significance here, the count in issue originated as allowed claim 21 in the Slatin application and was substituted in the interference when the examiner granted Alpert's motion to amend by adding it after finding the original count to be
The party Slatin as the senior party is entitled to prevail unless the junior party Alpert establishes his right to priority by a preponderance of the evidence. Levy v. Gould, 87 F.2d 524, 24 CCPA 910; and Archer v. Papa, 265 F.2d 954, 46 CCPA 835.
It is axiomatic that if the junior party is to prevail, the right to do so must be established by proofs which show priority of the precise invention defined by the count. In thus testing Alpert's case we are influenced, as was the board, by Alpert's interpretation of the count in his brief before the board. As stated by the board:
Thus to meet the count, the evidence on behalf of Alpert must establish his right to a date of invention prior to August 10, 1949, Slatin's filing date, upon his invention of a process in which titanium metal was deposited in crystalline aggregates on the cathode of an electrolytic cell from an electrolyte which consists of titanium dichloride or titanium trichloride dissolved in a solvent molten bath compound of materials of the group consisting of alkaline metal chlorides and alkaline-earth chlorides and mixtures thereof.
To establish his case Alpert offered the testimony of seven witnesses, including Alpert, and Schultz and Sullivan, who were originally named as co-inventors, and submitted a number of documentary exhibits.
Alpert asserts that this evidence established conception of the invention of the count on or about December 1, 1948, relying largely on the proofs of a suggestion submitted by him to Messrs. Sullivan and Jacobsen on December 15, 1948 and introduced in evidence as Exhibit 4.
After a careful review of this evidence we agree with the board's opinion that:
Alpert's evidence shows that National Lead Company adopted the program proposed in the December 1948 suggestion (Exhibit 4) and that Alpert and Schultz worked on the program, making reports on their progress to their supervisor, Sullivan. Those reports were also transmitted to Sullivan's immediate supervisor, Jacobsen, and Jacobsen's immediate supervisor, Alessandroni.
From these reports and the testimony Alpert established that four specific runs in a series directed to the production of titanium metal by electrolysis were made prior to August 10, 1949. These runs are relied on by Alpert as constituting actual reduction to practice of the invention defined in the count prior to Slatin's filing date. The dates of these runs are March 25, 1949; about May 23, 1949; the week of June 13, 1949; and the week preceding July 18, 1949.
The first alleged reduction to practice is the fourth run in the series, made on March 25, 1949 and reported in Alpert Exhibit 11. Concerning the product of that run, Schultz testified:
Examination of the two fractions by x-ray diffraction was made by the witness North. His report on the fraction adhering to the cathode was as follows:
Only the fraction shown in the electrolyte, or more precisely, the cathodlyte, showed indications of the presence of titanium metal.
We think the board was obviously correct in holding that the evidence regarding the run of March 25, 1949 does not prove the production of "titanium metal in crystalline aggregates" on the cathode. While Alpert argues that the fraction described as "in the electrolyte immediately around the cathode" probably had actually been on the cathode and had broken free when the solidified cell was broken as described by Schultz, that contention is at best mere speculation, and is otherwise unsupported. It is inadequate to meet the burden of proof which must be sustained by Alpert as junior party.
The second run advanced by Alpert as a reduction to practice is run 21, made about May 23, 1949 and reported in a progress report in evidence as Alpert's Exhibit 15. That report, designated as from Alpert and Schultz, states that "the great bulk of the metal was found as sponge firmly adhering to the cathode in the form of a conical mass tapering towards the bottom." It also specifies that the best material analyzed as 97.5% titanium.
The board noted the analysis of the product in Exhibit 15 but stated:
Alpert contends that the reports from Alpert and Schultz to their superiors at National Lead Company must be "considered for all they contain" on the basis of the federal shop book rule, 28 U.S.C. § 1732. We take this contention to mean that these reports must be accepted as proving all statements made therein.
We do not agree with that contention. The federal shop book rule of 28 U.S.C. § 1732 applies to admissibility of routine documents and records which experience has shown to be trustworthy but such records must be weighed against all other circumstances. Alpert has cited no authority to show that the rule is properly applicable to reports of scientific research and tests. We know of no authority for such a position and think such application of the rule would be both improper and unrealistic. Cf. Teter v. Kearby, 36 CCPA 706, 169 F.2d 808. Such reports, in our opinion, are no more than the usual inventor's work or progress
Thus, even accepting the weekly progress reports as a proper exception to the hearsay rule, their weight as corroborative evidence is no more than can be accorded to any other self-serving written document.
Alpert's position that the board was barred from dismissing the documentary reports of the analyses of the products because of Slatin's failure to object to their admission during the taking of testimony is not in accordance with and is contrary to Rule 285(c)
We therefore agree with the board that Alpert has failed to prove that run 21 constituted a reduction to practice of the count. As the board correctly points out, there is no testimony by anyone that he made an analysis of the product produced thereby and there thus is no proof that "titanium metal" was produced, irrespective of the quality of such metal which the count is interpreted as requiring.
The other two tests urged by Alpert as establishing reductions to practice are run 32, conducted during the week of June 13, 1949, and run 43, conducted during the week preceding July 18, 1949. Alpert Exhibits 16 and 17 relate to those runs.
As in the case of the run 21, however, there is no satisfactory proof that "titanium metal in crystalline aggregates" was deposited on the cathode or, in fact, that titanium metal in any form was produced in runs 32 and 43. Alpert testified that the analysis of the product referred to in Exhibit 16 was a chemical analysis made by him or his technician, but there is no testimony corroborating Alpert concerning the analysis and the technician who made the analysis did not testify. The evidence on the analysis of the product of run 43 is similarly deficient.
Alpert also offered in evidence a report, Exhibit 18-A, referring to a hardness test of a metal sample. The report is dated one day after Slatin's filing date, Alpert stating that the purpose of its submission was "not to support a further reduction to practice * * * but solely to demonstrate the nature of the testing procedure which was being conducted" at the time. However, the test is not supported by testimony of the person alleged to have made it and the mere fact that hardness tests were made, even if properly proved, would not overcome the deficiencies in Alpert's proof of reduction to practice pointed out above.
From the foregoing analysis of Alpert's proofs, it is apparent that Alpert has failed to sustain his burden of proving a reduction to practice of the claimed invention prior to Slatin's filing date of August 10, 1949. Since, as correctly held by the board, this is a case where there is no conception until a reduction to practice is attained, Alpert has also failed to show conception prior to that date. Moreover, Alpert does not urge that he was diligent from some date prior to Slatin's filing date until some subsequent actual reduction to practice or to his own filing date.
Alpert has brought several motions. First, he has moved to strike all of Slatin's testimony and exhibits on the basis of a charge that certain early dates in Slatin's preliminary statements were set out at a time when Slatin knew they were incorrect. That motion was denied by the board. Other motions were directed to striking the testimony of one of Slatin's witnesses on the grounds of inadequate notice, striking certain exhibits on the grounds they are irrelevant, striking certain questions on the grounds they were improper redirect examination and striking other testimony on the ground it was elicited by leading questions.
Although our view of the case renders moot the matters raised in the aforementioned motions, we have examined the evidence of Slatin and do not find it to reveal that the board erred in its treatment of Alpert's motions or that any of Slatin's evidence affects our analysis showing why Alpert's evidence is insufficient to support his position.
A matter of assessment of printing costs remains to be decided. Slatin moved that the cost of printing the entire record be charged to appellant Alpert although a portion of the material therein, comprising principally depositions of certain of Slatin's witnesses, was included only at Slatin's instigation. We have found much of the added material to be necessary in considering fully all of the issues raised on this appeal, several of which have required specific consideration of materials added on the motion of appellee. We thus consider its printing to be properly chargeable to the appellant. Slatin's motion is therefore granted and the cost of printing the entire record is charged to appellant.
For the reasons given, we find that the board correctly awarded priority to the senior party Slatin and we affirm its decision.
RICH, Judge, did not sit or participate in the decision.
United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'CONNELL, pursuant to provisions of Section 294(d), Title 28, United States Code.