These appeals are from the decision of the Board of Patent Interferences in Interference No. 89,543. The board awarded priority as to three counts to the party MacMullen et al. and the remaining counts to the party Santelli. Both parties appeal.
MacMullen et al. were issued a patent
The issue in No. 7035 is whether the testimony of MacMullen et al. is sufficient to establish a reduction to practice before the filing date of Santelli.
The issue in No. 7036 is whether the parent MacMullen et al. application establishes a constructive reduction to practice of the invention of counts 2, 4 and 8 before the Santelli filing date.
The invention relates to a method of coating glass surfaces, more particularly glass fibers, and the organosilicon coating compositions used. Hydrocarbon-substituted trihalosilanes are hydrolyzed in aqueous alkali and then acidified to a pH of 2 to 6 to form stable solutions of the alkaline hydrolysis products of the organotrihalosilanes. The stable solution is applied to a glass surface and a coating of insoluble organosilicon compound is deposited. Subsequent heating cures the coating by polymerizing the organosilicon compound.
It appears that the organosilicon composition is unstable at a pH in the range of 9 to 11. The word "unstable" describes a solution in which the dissolved siliconate precipitates into solid particles which fall to the bottom of the container. To avoid much precipitation at the unstable range when lowering the pH of a solution from strongly alkaline (pH 13), at which the material is stable, to the stable acid range (pH 2-6), the acidification is carried out rapidly. In addition, the unstable range of pH 9 to 11 is avoided by adding the alkaline material to the acid neutralizer. Count 5 specifies that the pH is reduced by "adding said hydrolysis products to an aqueous acid." If the acid is added to the alkaline hydrolysis products, the composition will
Counts 1 and 8 are representative and read:
Considering first the testimony involved in No. 7035, appellants pose three questions to be resolved:
As to the first question, Titus was a research chemist employed by Cowles Detergent Company who reported to Marzocchi, one of the appellants. In July 12-14, 1950, Titus carried out a series of tests which he entitled in his notebook "Determination of the Stability of 1% Solutions of Vinyl Sodium Siliconate of Various pH's."
The board refused to consider these tests as an actual reduction to practice of the composition counts because "these two counts recite a water repellent utility which Titus did not establish." There was no question, however, that the compositions were found to be stable and met the counts but for the recitation in the preamble of the ultimate utility of the aqueous compositions. Titus testified that during the period of his work with siliconates the goal was water repellency. He testified:
The record fails to show any tests for water repellency with the stable compositions
MacMullen et al. argue that it was unnecessary to establish a water repellency utility for the compositions because it was "a matter of common knowledge at the time [that] silicone materials were useful for rendering materials water repellent."
MacMullen et al. further rely on a letter from L. P. Biefeld to Marzocchi, dated May 11, 1950, as showing that the compositions were water repellent. We note that this letter relates to tests at pH 7, which is outside the scope of counts 8 and 9, and therefore cannot be considered to attribute a water repellency property to the solutions tested July 12-14, 1950.
As it will appear from the view we take of the case, it is unnecessary to decide whether the July 12-14, 1950 tests by Titus constitute a reduction to practice of counts 8 and 9.
As to the trial run at Huntingdon, Pennsylvania on August 8, 1950, the board found no actual reduction to practice.
In this run, a large batch of a material identified as SS-2D was prepared by Titus on August 1, 1950 "for test at O Corning-Fiberglas Corp." On August 8, Meyer, an employee of Owens-Corning Fiberglas Corporation,
Again, under the view we take of the case, it is unnecessary to decide whether the August 8, 1950 run at Huntingdon was, per se, an actual reduction to practice.
On April 10, 1951, another run was made at Ashton, R. I. MacMullen et al. claim that this plant run was a reduction to practice of the subject matter of all of the counts.
This run was carried out in what is termed a "coronizing unit." The report of Gagnon, an OCF employee who was present, states that a 128-yard cut of cloth was "heat cleaned at 1200° F. and went directly into the pad box containing the SS-2D solution." Pad rolls then squeezed off excess solution and the cloth was run into a drying oven at 250° F. The solution was made by adding 5 gallons of "Cowles SS-2D" to diluted muriatic Acid. The pH was adjusted to 4 with sodium hydroxide. The report
MacMullen et al. refer to the report of Frazer, an employee in charge of the plant control laboratory at the Cowles' Lockport, New York plant which describes the preparation of a large batch of Cowles SS-2D on March 29, 1951. The report states: "285 lb. net of filtered batch shipped in 30 gal. plain steel drum 3/30/51 by truck to Owens-Corning Fiberglas, Ashton, R. I."
Santelli contends that "Cowles SS-2D" varied in composition and method of preparation and that no one could testify as to the chemical composition used at Ashton. For support, Santelli relies on some calculations placed of record by MacMullen et al. indicating that the "Old Formula 7/19/51" included 10 moles of sodium hydroxide per mole of vinyl trichlorosilane and the "New Formula 11/1/51" reduced the ratio to 8 to 1.
Santelli also argues that "there was still doubt that the operations at Ashton were successful for their intended purpose." As to counts 8 and 9, Santelli argues that no tests of water repellency were made in the April 10th operations.
We are of the opinion that the run at Ashton, R. I. on April 10, 1951 constitutes an actual reduction to practice. There is nothing in the record to indicate that the term "SS-2D" was ever used to designate anything except alkaline hydrolysis products of vinyl trichlorosilane. On the other hand, there are many, many instances in the record showing SS-2D as the alkaline hydrolysis products of vinyl trichlorosilane. The fact that the amount of alkali employed was changed at least once does not alter the chemical composition or formula of the hydrolysis products in any material respect. The counts clearly do not define any precise amounts of alkali. We find no merit in the contention of Santelli that the composition of SS-2D varied. Whatever variations were made, the record indicates that every batch of Cowles SS-2D contained a "hydrocarbon-substituted silane triol" as defined in the counts. The pH and stability may have varied, but SS-2D was always a hydrocarbon-substituted silane triol.
The reports of the run at Ashton show that the properties of the SS-2D used were the same as the properties of SS-2D made at other times. The Gagnon report shows that the optimum pH of 4, as defined in the counts, was employed during the run; that pH10 was critical and must be avoided to prevent precipitation; that precipitation did occur "due to faulty pH readings"; that "the SS-2D was added to the acid solution" just as count 5 requires; and that the SS-2D was "alkaline." We find nothing in the record to indicate that SS-2D was not the vinyl siliconate which several witnesses testified that it was. The board admitted that "Meyer testified that he knew Cowles' SS-2D to be a vinyl derivative of siloxanolate," and thus within the alkaline hydrolysis products used in the method of the counts, but it found no proof that the Cowles' SS-2D used at Ashton was in fact such a material. There is no basis for assuming that it was not. The
While the Gagnon report does not show that the final product was tested for water repellency, this is not necessary for a reduction to practice of counts 8 and 9. Even though the preamble of counts 8 and 9 suggests the ultimate purpose of the composition is water repellency, it is clear that the aqueous compositions themselves are not water-repellent. The Gagnon report shows utility as a fabric finish since "the entire run was very unsuccessful" with SS-2D "as a substitute for the present 114 Finish." Finish 114 is shown by the record to contain a chromium complex for the purpose of improving the properties of the cloth, including water repellency. The tests for water absorption, wet flexural strength and contact angle appear to be tests of water repellency. The record shows numerous favorable comparisons between hydrocarbon-substituted silane triols and the previously used water-repellent finishing material. The report of Bacon, Manager of the Reinforced Plastic Section of the Products Development Laboratory at OCF at the time, indicates a realization that "a water system of * * * SS-2D" is useful because of good wet strength retention.
No one testified that the SS-2D used at Ashton came from any particular source. It seems likely that the batch prepared by Frazer on March 29, 1951 and sent to Ashton on March 30, 1951 was the material used on April 10, 1951. So far as the record shows, the only batch large enough to provide the ten gallons of SS-2D used at Ashton (the first 5 gallons precipitated, requiring a new mix) within several months of the date of the Ashton run, was the batch prepared by Frazer on March 29. However, even if the Frazer batch of March 29 was not the SS-2D used, we are convinced that the Marzocchi testimony that SS-2D made according to the method of the counts was used at Ashton has been corroborated. There is no fixed single formula in proving corroboration. Phillips et al. v. Carlson, 278 F.2d 732, 47 CCPA 1007. The record does not show that SS-2D ever varied from "hydrocarbon-substituted silane triol" or "an aqueous alkaline solution of the hydrolysis products of a hydrocarbon-substituted trihalosilane," as called for in the counts. Titus tested SS-2D at the pH designated in the counts and determined the stability. The Huntingdon run illustrated the superior flexural strength and the properties of the product made by the method of the counts. The report of corroborating witness Gagnon shows that the method steps of the counts were used at Ashton with SS-2D. Considering the record as a whole, we are persuaded that MacMullen et al. actually reduced to practice the method of counts 1 to 7 with the composition of counts 8 and 9 by the time of the Ashton run on April 10.
Since we find that MacMullen et al. actually reduced the invention to practice before the Santelli filing date, it is unnecessary to decide whether the invention of counts 2, 4 and 8 was constructively reduced to practice in the parent application of MacMullen et al. The affirmance of the decision of the board in No. 7036 is a result of our view of the testimony, and is not based on a consideration of the parent application.
For the foregoing reasons, the decision of the board in No. 7035 is reversed and the decision in No. 7036 is affirmed.