This appeal is from the decision of the Board of Patent Interferences, adhered to on reconsideration, awarding priority to Hauck.
Hauck is involved on the basis of his application, serial No. 554,133, filed December 20, 1955. On a motion to shift the burden of proof he was given the benefit of the filing date of a German convention application, December 23, 1954, as the result of which he became senior party.
Patterson and Lissner are the present applicants of an application, serial No. 520,137, filed July 5, 1955, by Patterson and Abrams. The interference, No. 89,824, was originally declared November 14, 1958, on that application but was reformed on May 12, 1959, upon the changing of the joint applicants from Patterson and Abrams to Patterson and Lissner.
Hauck, relying solely on his German filing date, took no testimony. Patterson et al. gave testimony themselves and called five other witnesses in corroboration thereof. They also put in evidence several documentary exhibits. They assert actual reduction to practice of the invention prior to Hauck's filing date of December 23, 1954.
To summarize, there are four possible issues: (1) Whether Hauck is entitled to his German filing date; (2) whether Paterson et al. had an actual reduction to practice before that date; (3) whether the latter were diligent during a period of about six months; and (4) whether the inventorship of the Patterson et al. application was illegally changed.
Invention of the Count
At the times here involved Patterson and Lissner, as well as most of their witnesses, were employed by Chemical Process Company, now a division of Diamond Alkali Company, in Redwood City, California. Part of this company's business was the manufacture and sale of "polyester resins," sold under the name "Duolite." These are liquid resins or "plastics" capable of being turned into tough solids by the action of catalysts. According to Lissner, and other witnesses, his company's "polyesters" were solutions of unsaturated polyesters in a polymerizable monomer, usually styrene, and the polyester itself was a condensation product of polycarboxylic acids and glycols. These polyesters were liquid products shipped to customers in drums and, as sold, might contain accelerators or inhibitors. Users of this material would mix it with a suitable cataylst, coat it on a reinforcing or laminating materal such as glass cloth or glass fiber mat material and allow it to harden. By placing the reinforcement over a form, objects of any desired shape could be produced such as flat or corrugated panels, boats, gear cases for aircraft, amusement park devices, cabs for earth moving equipment, protective "hard hats," or lamp shades, these all being objects actually made by Chemical Process Company customers.
An inherent difficulty in the use of the polyester resins was that as soon as the catalyst was added to the liquid resin it would begin to polymerize or set, first to a gel and then to hard material. It therefore had a "pot life," after which it would be of no further use, which might range from a few minutes to several hours depending on type and amount of catalyst mixed into it. A long pot life, which might be convenient in extending time available for fabrication, entailed the further disadvantage that vertical coated surfaces might not set rapidly enough to prevent running off of the fluid coating before it gelled.
The invention is a relatively simple variation in the process of using these known polyester materials wherein the cataylst is not mixed with the polyester before it is applied to the glass or other reinforcement but is separately coated on the reinforcement in a lacquer solution, the lacquer containing a volatile solvent which is allowed to evaporate, leaving the catalyst bound to the layer of material to be coated with the polyester. When the polyester is applied to the thus prepared
We shall consider first the date of invention to which Hauck is entitled. The examiner, granting a motion by Hauck to shift the burden of proof, held him entitled to the filing date of his German patent application under 35 U.S.C. § 119. Patterson et al. seek to deprive him of this date on the ground that the disclosure of the German application is insufficient to support the count, judged by the standards of 35 U.S.C. § 112. Appellants point out that Hauck's United States application contains a quantity of specific illustrative material not present in the German application. Notwithstanding this difference, the examiner made the following finding:
The examiner also ruled, in reply to argument by Patterson et al., that
The board found no error in the conclusion of the examiner and neither do we. Giving the German application, in the words of section 119, "the same effect as the same application would have if filed in this country," we find Hauck entitled to the December 23, 1954 date. Patterson et al. claim to have made an actual reduction to practice earlier than that date and we turn now to that issue.
Actual Reduction to Practice by Patterson et al.
Drawing what we deem to be unduly rigid principles of law primarily from the case of Thurston v. Wulff, 164 F.2d 612, 35 CCPA 794, and applying them to the facts, the board concluded that no actual reduction to practice had been proved. On a review of all the evidence, and considering it as a whole, we do not have the slightest doubt that the invention was reduced to practice several times before December 23, 1954 or that the proof thereof is legally sufficient.
Thurston v. Wulff was a case in which the appellant argued that the rule of independent corroboration of inventors' testimony or notebook evidence was a harsh one and "should not be applied with its usual strictness in chemical cases where new compounds emanate from large and well-conducted laboratories in the ordinary course of business
In that case, we note, the issue before the court was the identity of a compound alleged to be γ-nitropimelic nitrile, that being the subject matter of the count. The alleged corroborating evidence apparently failed, technically, to establish the identity of the material which was physically in evidence, as of a date earlier than the critical date. We are not faced with such a situation in this case, which involves the question of whether a simple process, using known materials, was or was not practiced.
On other occasions we have been faced with similar applications of Thurston v. Wulff, as we were recently in Hasselstrom v. McKusick, 324 F.2d 1013, 51 CCPA 1008, wherein we reversed a finding of no corroboration and said:
In Gianladis v. Kass, 324 F.2d 322, 51 CCPA 753, we said:
The foregoing cases present no novel doctrine. In Buffington v. Blair, 121 F.2d 635, 28 CCPA 1382, this court said:
The continuous story here begins on 10 June 1954, the date of three notebook
There is a considerable quantity of other evidence as to events preceding those just outlined, events substantially contemporaneous therewith, and events following immediately thereafter which, in our judgment, more than adequately establish a reduction to practice on 10 June 1954. We will first refer to the testimony of Richard W. Dorst, which the board dismissed in toto along with the testimony of two other corroborating witnesses merely on the ground that they "offered no testimony concerning the observation of acts which could constitute actual reduction to practice * * *." (Our emphasis.) We think this is too narrow a view of the nature of corroborating evidence. It is tantamount to a requirement that corroboration requires every inventor to have a technically qualified observer at his side during every phase of the completion of an invention through actual reduction to practice, scarcely a workable or practicable rule of evidence.
The witness Dorst, 36 at the time he testified, was then president of Dorsett Marine Division of Textron, builders of "Fiberglas" boats in three plants, which boats are made of "Fiberglas" cloth, mat, and woven roving combined with unsaturated polyester resins, cured, and known as Dorsett boats. From 1951 through September 15, 1955, he was employed by Chemical Process Company, hired as new products manager and made manager of the polyester division before the events herein took place. As such, he was concerned with the sale and development of polyester products. He was a graduate engineer with chemical training and prior experience in chemical manufacturing and a graduate of the Harvard Business School. Lissner was directly under his charge and worked with him on polyester technical service. In late April and early May of 1954, as shown by correspondence dated May 4, Dorst had been working on polyester promotion with the editor of Sunset Magazine, looking for do-it-yourself outlets for polyesters. A demonstration for the editor had been arranged for May 28. Dorst testified (several answers are here run together in narrative form):
Dorst then testified to having known about the 10 June 1954 laminated glass fabric panel above described and to seeing it within a matter of hours after it was made, though he did not say he watched the process. We continue with excerpts from his testimony:
Mr. Dorst then had his attention directed to a later test by Lissner recorded in his notebook under date of 6 Aug. 1954, witnessed the same day by Patterson, and seen "shortly thereafter" by Dorst. Dorst said:
In our judgment, Mr. Dorst's testimony has corroborative value of a high order. It is particularly to be noted in this case that the process of the count may be, and was, carried out using exactly the same polyester resins and the same catalysts already in use and being made and sold by Chemical Process Company
Lissner continued his work into September of 1954, trying out variations and refinements of the process and about this time Patterson prepared a three-page preliminary write-up of the invention entitled "VINYL AND/OR CONDENSATION POLYMERIZATIONS WITH CATALYST IMPREGNATED FILLERS." There are six specific examples in this write-up, some of which clearly describe the invention and go even further, describing the results attained by practicing the invention. One example refers to tests allowing periods of a day, a week, and a month between impregnating the glass mat and cloth with catalyst-binder solution and coating it with polyester-styrene mix, the gel time being the same in all three tests. The document is not dated but the evidence makes it quite clear that it was sent to San Francisco attorneys who used it in writing to Washington attorneys on September 20, 1954, to order a search in the Patent Office. The letter requesting the search clearly discloses the same invention as the write-up and states at its end that "A copy of the inventor's report is enclosed." Another letter dated December 7, 1954, from the San Francisco attorneys to Dr. I. M. Abrams, another witness, technical director of Chemical Process Company, stamped with a received stamp Dec. 8, 1954, reads:
Dr. Abrams testified that he ordered the search made, that Patterson prepared the write-up, that he, Abrams, gave it to the attorneys, that he asked for its return because it was the only one available and he needed it to make a more complete write-up for a patent application, and that the letter had been in his files ever since. The San Francisco attorney testified and confirmed the foregoing events.
Finally, with respect to dealings with the attorneys, Dr. Abrams prepared for them a more detailed write-up of 7 closely-spaced typed pages which bears date December 28, 1954. The letter of transmittal of the write-up to the attorneys bears the same date plus the notation "(dict. 12-24-54)." The letter bears a received stamp of the attorneys Dec. 29, 1954. To be sure, these dates are all a day or more after Hauck's date but as circumstantial evidence of when the process had been reduced to practice and as the final link in the chain of evidence it is evident that the test work on which the write-up is based must have been done a considerable time prior to the preparation of the detailed write-up, which Dr. Abrams said probably took him two weeks to write.
We could review the evidence of another reduction to practice made by Patterson
We therefore find actual reduction to practice by Patterson and Lissner prior to the date on which Hauck relies to have been proved. This makes it unnecessary to consider the issue of diligence by Patterson et al. but does make it necessary to pass on whether their application is invalid by reason of the change in inventorship.
Change of Inventors by Appellant
The Patterson et al. application is assigned to Chemical Process Company division of Diamond Alkali Company. It was originally filed in the names of Patterson and Abrams and was changed to one in the names of Patterson and Lissner, the Patent Office consenting. The relevant statute is the last paragraph of 35 U.S.C. § 116:
Patent Office Rule 45 implements the statute.
Hauck asserts that on the basis of the record herein there was clearly a deceptive intention in the original filing without Lissner. He presented this issue below by petition to the Commissioner who, acting through the First Assistant Commissioner, left the question to be decided by the board at final hearing as a matter ancillary to priority or one for a recommendation under Rule 259.
The board found compliance with section 116. It found no basis in the testimony for holding the conversion was made with deceptive intent.
Section 116, together with section 256 with which it should be read, was added to the law in the 1952 revision for the purpose of removing technical grounds for attacking the validity of patents by reason of the erroneous naming of inventors, on which point the prior law was very strict. As such a liberalizing provision it should be given a liberal construction in favor of applicants, permitting them to make such changes as more thorough consideration of facts may show to be necessary in order to comply accurately with the law in naming inventors. See In re Schmidt, 293 F.2d 274, 48 CCPA 1140.
Our study of the record shows no ground for overruling the well-considered decision of the board on this issue.
Cost of Additions to Record
The question remains who should bear the cost of printing about 65 pages in a record of 278 pages, the added pages having been included at the request of appellee. All but 17 of the added pages relate to the proceedings below on the change of inventorship issue, an issue Hauck was entitled to raise on appeal
The decision of the Board of Patent Interferences is reversed.