Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
Patent Interference No. 101,589
July 31, 1989
Final Hearing April 11, 1989
Pulse Controlled Expansion Valve
Application of Richard H. Alsenz filed July 9, 1985, Serial No. 753,185. Accorded Benefit of Serial No. 639,271, filed August 8, 1984.
Patent granted to David P. Hargraves on July 17, 1984. Patent No. 4,459,819 filed November 1, 1982, Serial No. 438,405. Accorded Benefit of Serial No. 354,136 filed March 5, 1982.
Philip B. Polster, J. Philip Polster, Lionel L. Lucchesi and William B. Cunningham, Jr. for Hargraves. Oral argument by William B. Cunningham
Before Urynowicz, Boler and Parsons
This interference involves an unassigned application of Alsenz, and a patent to Hargraves assigned to Emerson Electric Co.
Counts 1 and 3 are the only counts in issue. Count 1 reads as follows:
Apparatus for controlling a refrigeration system, the latter comprising a compressor having an inlet and an outlet, a condenser connected to the outlet of the compressor, an evaporator connected to said condenser and to the inlet of said compressor, an expansion valve between said condenser and said evaporator, said condenser delivering high pressure liquid refrigerant to said expansion valve, said apparatus comprising a solenoid valve constituting said expansion valve, said solenoid valve having a valve body with a flow passage therewithin for the flow of refrigerant therethrough, a valve seat constituting a portion of said flow passage, a valve member selectively movable between a closed position in which it is sealingly engageable with said valve seat so as to block the flow of refrigerant through said flow passage and an open position in which said valve member is clear of said valve seat permitting the flow of refrigerant through said flow passage, said flow passage downstream from said valve seat having a metering orifice therein for restricting the flow of refrigerant through said flow passage to a predetermined flow rate when said valve member is open substantially independently of the distance said valve member is moved from its closed position, a solenoid actuator for effecting movement of said valve member between its closed and its open position upon energization and deenergization of said solenoid actuator, a spring for resiliently biasing said valve member toward one of its said positions, and control means for periodically energizing and de-energizing said solenoid actuator thereby to regulate the flow of refrigerant through said solenoid valve.
The claims of the parties that correspond to this count are:
Alsenz Claims 1-8.
Hargraves Claims 1-8.
Count 3 reads as follows:
*2 In a refrigeration system comprising a compressor having an inlet and an outlet, a condenser connected to the outlet of the compressor, an evaporator connected to said condenser and to the inlet of said compressor, an expansion valve between said condenser and said evaporator, said condenser delivering high pressure liquid refrigerant to said expansion valve, said refrigerant expanding as it flows through said expansion valve, an improvement comprising:
(a) said expansion valve being a solenoid operated valve having a body with a flow passage therewithin for the flow of refrigerant therethrough;
(b) a valve seat constituting a portion of said flow passage;
(c) a valve member selectively movable between a closed position in which it is sealingly engageable with said valve seat so as to block the flow of refrigerant through said flow passage in an open position in which said valve member is clear of said valve seat permitting the flow of refrigerant through said flow passage;
(d) a solenoid actuator for effecting movement of said valve member between its closed and its open position upon energization and deenergization of said solenoid actuator;
(e) a spring for resiliently biasing said valve member towards its closed position;
(f) control means including,
(i) means for sensing the superheat of the refrigerant discharged from said evaporator, and
(ii) means for generating an on-off modulated solenoid control signal having a period, and a duty cycle corresponding to a ratio of valve open time to the length of said period, said control means periodically energizing and deenergizing said solenoid actuator where the duty cycle of the solenoid control signal regulates the flow of refrigerant through said expansion valve;
(g) means for generating a setpoint signal representative of a desired superheat operating condition of the refrigeration system; and
(h) said solenoid control signal generating means having an integrator means for generating an integral control signal for controlling said duty cycle by integrating the difference between said superheat and said setpoint signal, and if the difference between said superheat and said setpoint is less than zero, decreasing said duty cycle, and if the difference between said superheat and said setpoint is greater than zero, increasing said duty cycle.
The claims of the parties that correspond to this count are:
Alsenz Claims 9-17
Hargraves Claims 9-17
Both parties submitted an evidentiary record. The case-in-chief for Alsenz consists of the depositions of Richard H. Alsenz and Roger Carl Ansted together with associated exhibits. The case-in-rebuttal for Alsenz consists of a declaration by Robert L. Murphy, three declarations by Richard H. Alsenz, a declaration by James D. Gaines, an affidavit and a declaration by Milton C. Graves and a declaration by each of William J. Barbier, John Kaasa and James J. Albaugh together with associated exhibits. The evidence submitted by Hargraves consists of a declaration from each of David P. Hargraves, Joseph L. Behr, Donald H. Hannasch, Joseph R. Humphrey and William J. Barbier and a deposition by each of David P. Hargraves, Joseph L. Behr, Dennis Yerlikaya, Bernard Kunz, Gary Gertsen, Joseph R. Humphrey and Richard H. Alsenz together with associated exhibits. In addition, Hargraves relies on portions of the prosecution history of the Alsenz parent application Serial No. 639,271 under 37 CFR 1.682 (Paper Nos. 60 and 72).
THE ALSENZ CASE FOR PRIORITY
*3 Since the Hargraves patent issued before the effective filing date of the Alsenz application, the burden is on Alsenz to prove his case for priority beyond a reasonable doubt. Paivinen v. Sands, 339 F.2d 217, 144 USPQ 1, 4 (CCPA 1964), amended, 52 CCPA 1030 (1965); Kwon v. Perkins, 6 USPQ2d 1747, 1751 (BPAI 1988).
Alsenz contends that he conceived of the subject matter of count 1 on October 1, 1979 and reduced it to practice by November 24, 1979; and that he conceived of the subject matter of count 3 on January 10, 1980 and reduced it to practice on February 17, 1980 (main brief, page 3). AX 1, 2, 3A-3K, 4, 4A and 5A [FN1] were introduced into evidence during the Alsenz case-in-chief. The testimony of Alsenz to the effect that he tested a refrigeration system including a solenoid expansion valve of the type shown in AX 4, 4A (AR 207) during the period of November 1979 through February 1980 is deemed to be adequately corroborated by Ansted who testified that his office was in the same large warehouse size room where the equipment was operating (AR 320). He would estimate that the system ran off and on for 30 to 40 days during above-stated period (AR 314). Ansted was "painfully aware" of when the system was operating because the hammering noise that occurred every time the solenoid closed could be heard across the room (AR 308-311, 320-321). The system was used to refrigerate a 12 foot refrigeration case that in normal use would be open at the top; however, three doors, each four feet in length, had been made to cover the top of the case. During the tests usually one or more of the doors were closed; otherwise, the system would not perform to properly cool the case on warm days (AR 321-325).
AX 3A-3K are charts showing suction pressure and condenser pressure (3A-3K) and air discharge temperature (3B-3K). They were purportedly taken by Alsenz (AR 206) on the above referred to system (AR 59-60) when it was operating at various times from November 22 through December 2, 1979 (3A-3J) and on February 17, 1980 (3K). Referring to AX 3E, for example, the small chart shows the discharge air temperature varying between about -5 degrees F. and -15 degrees F., the larger chart under the small chart shows the condenser pressure varying between 110 psi and 120 psi during the hour from 9 p.m. to 10 p.m. and the second page of AX 3E shows the suction pressure varying between 15 psi and 3 psi during the same hour. The lower condenser pressure and higher suction pressure occurred when the compressor was off and the reverse occurred when it cycled back on (AR 67). The sharp jagged lines at the higher condenser pressures were caused by the recorder needle bouncing every time the solenoid valve closed causing a shock wave in the system (AR 62, 68) and producing the hammering noise referred to by Ansted (AR 308-311, 320-321) and Alsenz (AR 344, 353, 380, 384-386, 395-400).
*4 Hargraves contends that the evidence submitted by Alsenz is inadequate to establish conception or a reduction to practice of the subject matter in count 1 because he has not shown that the device tested in late 1979 and early 1980 included the metering orifice or the control means recited therein. With respect to count 3, Hargraves alleges that Alsenz has failed to establish conception or a reduction to practice of the control means set forth therein. Hargraves further contends that the evidence shows that the device tested cannot properly be relied upon for a reduction to practice because it was inoperative for its intended use because of, inter alia, the liquid shock problem testified to by Alsenz and Ansted. Hargraves further contends that Alsenz admitted during the prosecution of his parent application that the device relied upon here by Alsenz for a reduction to practice had not been reduced to practice and was inoperative for its intended use due to the liquid shock and other problems in order to avoid an on-sale bar and should be estopped from asserting the contrary in this proceeding.
Count 1 calls for:
... a valve seat constituting a portion of said flow passage, a valve member selectively movable between a closed position in which it is sealingly engageable with said valve seat so as to block the flow of refrigerant through said flow passage and an open position in which said valve member is clear of said valve seat permitting the flow of refrigerant through said flow passage, said flow passage downstream from said valve seat having a metering orifice therein for restricting the flow of refrigerant through said flow passage to a predetermined flow rate when said valve member is open substantially independently of the distance said valve member is moved from its closed position....
The structure illustrated in Figure 7 of the Hargraves patent includes a metering orifice O downstream of the valve seat adapted to perform the function recited in count 1 (column 7, lines 1 to 19), whereas the valve illustrated in Figure 2 thereof does not (column 6, lines 41 to 59).
Alsenz testified that the valve used in the tests recorded on AX 3A-3K had a metering orifice marked "mo" in AX 4A. However, the portion of the valve so marked is larger in diameter than the flow passage through the valve seat and thus does not meet the metering orifice recited in count 1 (AR 88, 89, 374). The Sporlan valve shown in AX 4 is the only solenoid valve that Ansted, the only corroborating witness, remembers being tested (AR 256). Because of the hammering problem experienced with the solenoid valves, Ansted says they then investigated other types of valves (AR 260; AX 2, p. 10). Alsenz testified that other flow restrictors were tried during the period of November 1979 through February 1980 but his testimony in this regard has not been corroborated by Ansted. The latter merely testified that a number of different flow control devices were tried in an attempt to reduce the hammering noise but he was not asked and did not say when these devices were tested. The first reference in the documentary evidence submitted by Alsenz to a flow control device is on page 28 of AX 2 which is dated 9/2/80 (September 2, 1980). A further reference to flow restrictors appears in AX 1, p. 4 which is dated 4/12/81. We note that none of AX 1 has been authenticated as to date or content by evidence independent of the inventor since Ansted said he had not seen that document until shortly before his deposition (AR 294). Accordingly, AX 1 has not been accorded any evidentiary weight toward establishing the Alsenz case for priority. Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936, 947 (CCPA 1981). In any event, both dates are well after the November 1979--February 1980 time frame when Alsenz alleges the invention was reduced to practice and he has not attempted to show a reduction to practice after February 1980 (main brief, page 4). Moreover, the record does not establish that Alsenz had the function required by the metering orifice set forth in count 1 in mind at any time prior to the filing date of the application that matured into the Hargraves involved patent. Neither conception nor reduction to practice can be established nunc pro tunc. Knorr v. Pearson, 671 F.2d 1368, 213 USPQ 196, 201 (CCPA 1982). Accordingly, we hold that Alsenz neither conceived nor reduced to practice a device including a metering orifice as recited in count 1 prior to the filing date of the Hargraves involved patent.
*5 From the testimony of Ansted, we conclude that he was not concerned with how the refrigeration system was being controlled during the period from November 1979 to February 1980. He knew by the sound of gas flashing on opening and the hammering sound on closing that the valve was opening and closing every few seconds (AR 309). He was involved in the project to assist with the mechanical aspects of the valve (AR 229) and it is clear from his testimony that he did not pay any particular attention to the electrical circuit used to control the solenoid valve (AR 253, 255, 308). Although Ansted's testimony indicates that the valve was being controlled to open and close periodically in the November 1979-February 1980 period, we conclude that he has failed to corroborate the testimony of Alsenz to the effect that it was the circuit shown on page 4 of AX 2 that was so used (AR 214).
Moreover, in our view, page 4 of AX 2 has not been authenticated as to date or content prior to the filing date of the Hargraves patent. In this regard, we note that Alsenz, Ansted and others made entries in AX 2 of matters which they considered important to the expansion valve project but no one witnessed another person's entry (AR 235). Thus, the circuit drawing made by Alsenz on page 4 of AX 2 was not witnessed by Ansted or anyone else. A more detailed circuit drawing appearing on page 5 of AX 2 shows a heater as the load being controlled. That circuit was drawn by an individual who did not testify. The circuit on page 4 of AX 2 indicates that it can be used to control either a heater or a solenoid coil. However, the original of page 4 of AX 2 shows that the circuit was drawn in pencil and the area of the drawing now bearing the symbol for the solenoid coil had been erased and written over (AR 124-125). Page 4 of AX 2 is dated 2/10/80, page 5 is undated, page 6 is dated 7/30/80 and relates to a noise suppression device. Pages 7 to 9 are blank and page 10 bears the next entry which was made by Ansted on 3/21/80, over a month after the alleged February 17, 1980 reduction to practice of count 3 purportedly represented by AX 3K, and it relates to a valve other than a solenoid valve. Thus, there does not appear to be any reason for Ansted to have reviewed the notebook from which AX 2 was taken prior to 3/21/80. By then he was investigating other valves so that we deem it doubtful, even in light of his testimony at AR 249, that he studied the first few pages of the notebook other than to see that several blank pages were left between the information relating to the solenoid valve and that about the new type of valve he was working with. Ansted could not recall when he wrote the index set forth inside the front cover of AX 2 (AR 248-249) and could only base his testimony as to when he saw page 4 on the dates that appear on pages 4 and 6 neither of which was dated by him (AR 254-255). Bearing in mind the heavy burden of proof on Alsenz, we find the testimony of Ansted to be insufficient to establish the authenticity of page 4 of AX 2. From this fact together with the fact that Ansted did not pay close attention to the circuitry used during the actual testing, we hold that Alsenz has failed to establish the device relied upon for a reduction to practice included either the control means broadly recited in count 1 or the control means specifically recited in count 3. Since the device tested has not been shown to have included every limitation of either count 1 or count 3, Alsenz is not entitled to rely thereon for a reduction to practice. Newkirk v. Lulejian, 825 F.2d 1581, 3 USPQ2d 1793, 1794 (Fed.Cir.1987)
*6 In addition, it is clear to us from paragraphs 3 to 8 of the Alsenz declaration dated 2/6/85 (AR 410-412) and the comments submitted February 7, 1985 by his counsel in a preliminary amendment in parent application S.N. 639,271 (HR 940-942) that the testing relied upon here for a reduction to practice was nothing more than an abandoned experiment. Alsenz testified at AR 385-386, 397-399 that the "first embodiment" referred to in the Alsenz declaration (AR 410) is the one reflected in the test charts introduced as AX 3A-3K. Alsenz argues that the valve tested was suitable to establish a reduction to practice of the subject matter in the counts but would not have been commercially acceptable. However, we conclude from the testimony of Alsenz and Ansted together with the above mentioned earlier filed declaration of Alsenz and the comments of counsel that Alsenz considered the tests a failure in early 1980 due to, inter alia, the liquid shock problem, i.e., it was not suitable for its intended use. Newkirk v. Lulejian, supra.
After analyzing the evidence submitted by Alsenz with respect to the period from November 1979 to February 1980, we hold that Alsenz has failed to carry his burden of proof as to conception or reduction to practice of the subject matter in either count 1 or count 3. Since this was the only ground asserted for priority in the Alsenz main brief, he has failed to show that he made the invention prior to the November 1, 1982 filing date of the application that matured into the involved Hargraves patent and judgment will be entered in favor of Hargraves with respect to both counts.
We need not consider the question of suppression of concealment on the part of Alsenz, raised by Hargraves, since that question does not arise in the absence of a reduction to practice. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117, 120 (CCPA 1976).
During the period for filing preliminary motions, Hargraves filed a motion for judgment under 37 CFR 1.633(a) on the ground that Alsenz was barred from obtaining a patent on his claims corresponding to the counts due to an on-sale bar under 35 USC 102(b) created by an offer by Hargraves to sell an apparatus meeting the terms of the counts in December 1983. Hargraves argued that Alsenz' parent application Serial No. 639,271 filed August 8, 1984 does not provide adequate support under 35 USC 112, first paragraph, for the metering orifice of count 1 and for the control means of both counts and, therefore, Alsenz is not entitled to the benefit of that application. Since the Alsenz involved application was filed on July 7, 1985, Hargraves argued that the December 15, 1983 offer to sell occurred more than one year prior to Alsenz' filing date and established a section 102(b) bar. The examiner-in-chief (EIC) treated the motion as in effect two motions--(1) a motion to deny Alsenz benefit of his parent application as to both counts and (2) a motion for judgment on the basis of a section 102(b) on-sale bar.
*7 The EIC held that Alsenz' parent application provided adequate support under section 112, first paragraph, and denied both motions. Hargraves requests the questions raised in the motion be considered at final hearing pursuant to 37 CFR 1.655(b).
The burden is on Alsenz to show by clear and convincing evidence that his parent application provides adequate support under 35 USC 112, first paragraph, for every limitation of the count. Martin v. Mayer, 823 F.2d 500, 3 USPQ2d 1333, 1335 (Fed.Cir.1987).
Hargraves contends that Alsenz' parent application lacks section 112, first paragraph, support for the following limitation in count 1:
said flow passage downstream from said valve seat having a metering orifice therein for restricting the flow of refrigerant through said flow passage to a predetermined flow rate when said valve member is open substantially independently of the distance said valve member is moved from its closed position....
On pages 8 and 9 of his main brief, Alsenz discusses where he has support in his involved application for the above limitation. The sentence "[I]n some systems, the restrictions 71, 73 respectively in front of and behind expansion valve 38, can be incorporated to help regulate the flow rate through the valve" appears on page 10, lines 32 to 36 of the parent application and is repeated exactly at page 9, lines 19 to 22 of the involved application as pointed out in the middle of page 8 of Alsenz' main brief. The corresponding portion of the disclosure cited at the bottom of page 8 and the top of page 9 of the main brief appears on page 24, lines 13 to 27 of the parent application and reads as follows:
.... some measure of filtering of these impulses can be achieved by the use of line restrictions ahead of and behind expansion valve 38. For example, FIG 1 illustrates these restrictions 71 and 73, respectively. (Such restrictions could just as easily be incorporated into expansion valve 38.) Two types of restrictions have been found to improve the filtering of these impulses, one type is a simple restriction in the diameter of the line to a more complex type which monitors the flow therethrough and modulates the restriction as a function of the pressure drop thereacross to obtain a constant flow rate. This latter constant flow control device tends to eliminate variations in flow rate due to pressure changes across the restriction.
This portion of the disclosure in the parent application differs from that quoted from the involved application on pages 8 and 9 of Alsenz' main brief in that in the parent application the above quotation is only part of a paragraph and the parenthetical expression "such.... 38" is longer in the involved application making reference to figures of the drawing which were not part of the parent application. The portion of the paragraph at page 24, lines 10 to 13 in the parent application that does not appear in the involved application reads as follows:
*8 [I]n addition to the controlling of the openings and closings of valve 38 by the ramp time of the pulsewidth modulated waveform from converter 26 to minimize pressure impulses in the system,....
On pages 23 and 24 of the parent application, Alsenz discusses the problem of shockwaves created in the system by opening and closing the solenoid valve and in the paragraph bridging pages 23 and 24 states:
[T]he present invention has solved this problem by controlling the dp/dt condition on going from full flow to zero flow by ramping up and down the control signal to the solenoid valve 38 in a controlled manner. This slowing down of the speed with which openings and closings occur minimizes the time rate of change of the pressure condition at the orifice of the valve 38. The opening time represented by the ramp condition of the pulsewidth modulated waveform controllably moves the orifice closing mechanism between the two positions representing the full open and fully closed position. In this manner, the undesirable pressure shockwave in the refrigerant coolant is essentially eliminated.
In our view, the disclosure in the parent application does not provide a written description of the limitation in question as required by the first paragraph of section 112 but actually teaches away therefrom in disclosing that the valve should be slowly opened and slowly closed to slowly reach full flow and slowly return to zero flow. Thus, the disclosure in the parent application when read in context is just the opposite of that recited in the count which calls for the flow rate to be independent of the distance the valve is moved from its closed position.
The valve control means disclosed in the parent application is deemed to provide adequate section 112, first paragraph support for the control means broadly set forth in count 1 and specifically set forth in count 3, in our view, and Hargraves has not specifically pointed out what is lacking in the Alsenz disclosure with respect thereto.
Accordingly, we hold that Alsenz is not entitled to the benefit of his parent application Serial No. 639,271 with respect to count 1 for failure to support the metering orifice limitation.
Since Alsenz is not entitled to the benefit of his parent application with respect to count 1, we consider the offer to sell an apparatus meeting the terms of count 1 by Hargraves in December 1983 to constitute a bar under 35 USC 102(b) to Alsenz from receiving a patent on claims 1 to 8 corresponding to said count. Alsenz has not presented any arguments in his brief or reply brief to the effect that Hargraves did not place the invention of count 1 on sale in December 1983 but has only asserted that he (Alsenz) is entitled to the filing date of his parent application with respect thereto. Accordingly, the judgment entered hereinafter will state that Alsenz is not entitled to a patent containing claims 1 to 8 corresponding to count 1 due to a section 102(b) on-sale bar.
*9 Hargraves filed an additional preliminary motion for judgment alleging that the subject matter in the counts is unpatentable to Alsenz on the ground that Alsenz had placed a device embodying the subject matter of the counts in public use or on sale more than one year prior to the filing date of his parent application. This motion was deferred to final hearing by the EIC. Hargraves requests that we consider the merits of the motion at this time.
The burden is on Hargraves to establish by a preponderance of the evidence the public use, sale or offer for sale of the claimed invention or an apparatus that would have rendered the claimed invention obvious by its addition to the prior art which occurred in this country more than one year prior to the effective filing date of the Alsenz involved application. If these facts are established, Alsenz must come forward with an explanation of the circumstances surrounding what would otherwise appear to be commercialization outside the grace period. In re Caveney, 761 F.2d 671, 226 USPQ 1, 3 (Fed.Cir.1985); UMC Electronics Co v. U.S., 816 F.2d 647, 2 USPQ2d 1465, 1472 (Fed.Cir.1987).
The public use, sale or on-sale activity relied upon by Hargraves to bar Alsenz from obtaining a patent on the subject matter in counts 1 and 3 relates to activity with respect to the embodiment of the solenoid expansion valve and control circuitry disclosed in the Alsenz parent application filed August 8, 1984. Thus, the critical date with respect to the alleged section 102(b) bar is August 8, 1983. Several valves and associated control circuitry of the type disclosed in the parent application were tested well prior to the critical date at locations outside the premises of Altech Controls (Altech), a company founded by Alsenz and of which he is the president (AR 410, 412-414). In the testimony presented herein, the valves and associated circuitry have been referred to alternatively as "the valve" or as the "Altronex Control System". On March 30, 1983, Alsenz was informed that the valves being tested at Hussman refrigeration in St. Louis, Missouri "appear to be operating satisfactory with healthy energy savings being realized at low ambient temperatures." (HX 74). James D. Gaines, an engineer for Hussman, said that the results shown in HX 74 fairly accurately described the results that Hussman had from the test (HR 632). Hargraves contends that the testimony of Gaines and HX 74 show that the valve was tested to the point where it was operatively and commercially marketable as of the end of March 1983.
At the urging of Gary Gertsen, a salesman for Altech, Robert L. Murphy of Perry & Company of Los Angeles submitted a blanket purchase order for three hundred of the valves on April 7, 1983 at a price not to exceed $125.00 each or a total price of $37,500.00 (HX 91; AR 406, par. 10). Prior to issuing the purchase order, Perry & Company had tested one of the valves and was satisfied enough with its operation that they wanted to test the valve in a whole supermarket (AR 406, par. 9). According to Gertsen, the salesmen for Altech were under pressure to pre-sell a thousand valves before the company would start a limited production run (HR 579-586).
*10 The tests at Hussman continued to run favorable as of April 11, 1983 (HX 85). On April 29, 1983, J. Kaasa, Regional Sales Manager, informed Hussman that "[T]he first production run of the 'Altronex Control System' will be during the month of June '83. If you will require any of the first run, please advise us by 5/1/83." (HX 87). On May 24, 1983, a purchase order for 10 valves at $125.00 each from the first production run was received from Hussman (AR 690; HX 75-76; HR 797-803, 860-861).
On May 26, 1983, Alsenz met with Joseph R. Humphrey, Vice president of Engineering of Tyler Refrigeration Corporation, at which time Humphrey received the impression from Alsenz that the Altronex valve had been tested and Altech was ready to market it for use in commercial refrigeration applications. During June 1983, Tyler received two Altronex Control Systems from Altech as sales samples and it was Humphrey's understanding that Tyler was to evaluate the samples and determine if they wanted to purchase production quantities of the Altronex Control System (HX 78; HR 705, 706, 736, 737).
By June 22, 1983, the test results at Hussman were excellent and the fact that purchase orders had been received from Hussman and Perry & Company was reported to Alsenz from Jim Albaugh, Vice President of Sales (HX 90-91; AR 761).
The above evidence indicates that there were two purchase orders received by Altech for a total of 310 Altronex Control Systems at a total cost of over $38,000.00 prior to the critical date and the testimony of Humphrey is deemed to establish an offer from Altech to sell Altronex Control Systems to Tyler prior to the critical date. Accordingly, Hargraves has made out a prima facie case that the Altronex Control System was on-sale prior to the critical date. Alsenz asserts (reply brief, pages 14-15), and we agree, that there is no evidence in the record to show that the Altronex Control System included the "metering orifice" set forth in count 1. Hargraves argues that since Alsenz has alleged that the parent application provides support for the subject matter in both counts, he has admitted that the Altronex Control System included all of the limitations of the counts. However, Alsenz had relied on the restrictor 73 disclosed in the parent application as support for the metering orifice limitation and we held contrary to that position in denying benefit of the parent application as to count 1. Moreover, the disclosure in the parent application indicates that use of the restrictor 73 is optional and thus it would not necessarily have been in the systems tested and offered for sale. Accordingly, we hold that the offer for sale of the Altronex Control System prior to the critical date did not constitute a section 102(b) bar to the subject matter of the Alsenz claims corresponding to count 1 since it has not been shown that that system contained the "metering orifice" of count 1 or that the subject matter of count 1 would have been obvious (section 102(b)/ 103) from the structure offered for sale. Alsenz has not pointed to any limitation in count 3 that was not met by the Altronex Control System. Thus, we hold that Hargraves has established a prima facie case that the subject matter of count 3 was on-sale prior to the critical date.
*11 The burden thus shifts to Alsenz to rebut the prima facie case of an on-sale bar by showing that he falls under the experimental use or sale exception by evidence that is full unequivocal and convincing. In re Theis, 610 F.2d 786, 204 USPQ 188, 193 (CCPA 1979). Alsenz contends that the purchase orders from Perry & Company and Hussman were not real purchase orders and that the Altronex Control System was not on-sale prior to the critical date but was in fact still being tested until after the filing of the parent application.
The sales staff at Altech during the pertinent period included James J. Albaugh, Vice President of Sales; John Kaasa, Regional Sales Manager; Milton C. Graves, Regional Sales Manager; and Gary Gertsen, Regional Sales Manager. As part of Hargraves case-in-chief, Gertsen testified that the sales staff was under pressure to pre-sell one thousand of the Altronex Control Systems prior to the time he left the company in June 1983 (HR 499). His testimony is reinforced by Robert L. Murphy of Perry & Company who said Gertsen approached him several times to issue a blanket purchase order for a number of the Altech electronic expansion valves (AR 404). The testimony by Albaugh (AR 761-764), Graves (AR 695-721) and Kaasa (AR 758-760) is to the effect that they were not authorized to sell or to offer to sell the Altronex Control System until after the critical date. This testimony is deemed to be in conflict with the documents generated during the period in question. As early as March 25, 1983, Albaugh was informing his salesman to look ahead and beyond the commercial refrigeration (supermarket) industry for the Altronex and that they should be super excited over the potential Altronex offers to Altech and to each of them individually (HX 71). In HX 87 Kaasa informed Hussman of the first production run scheduled for June '83 and stated "[I]f you will require any of the first run, please advise us by 5/1/83." A copy of this memo was sent to Albaugh. HX 88 (a memo from Albaugh to Alsenz dated May 16, 1983), points out that Hussman is sending a purchase order for 10 valves pursuant to a conversation between Kaasa of Altech and Gaines of Hussman. The testimony of Gaines (AR 691) to the effect that the purchase order for 10 valves was not solicited by sales representatives from Altech is, in our view, contradicted by HX 87 and 88. On HX 90 (a memo from Albaugh to Alsenz dated June 22, 1983), Albaugh notes that a "P.O. for 10 valves from first production run" was received from Hussman and a "P.O. (blanket order) for 300...." was received from Perry & Company. There is nothing in the memo to indicate that the P.O.'s were not real purchase orders or that they were not or should not have been solicited. A copy of this memo was sent to Graves and Kaasa.
Although Altech continued testing the Altronex Control Systems after the critical date, those tests related to multiple valve applications involving, for example, a whole supermarket (AR 414). Such testing is not deemed to be particularly pertinent to the subject matter of count 3 which is directed to "an expansion valve". In any event, the fact that Altech continued to test the Altronex Control System after the critical date does not preclude a finding that the system was considered marketable and on-sale prior to that date. UMC Electronics Co. v. U.S., Supra. Upon review of the entire record, we are persuaded that Altech was commercially exploiting the subject matter of count 3 prior to the critical date. We conclude, therefore, that Alsenz has failed to adequately rebut the prima facie case established by Hargraves with respect to the subject matter in count 3. Thus, the judgment entered herein will state that Alsenz is not entitled to a patent on claims 9 to 17 corresponding to count 3 due to a section 102(b) on-sale bar.
*12 Although this matter has no bearing on the questions we have decided above, we note that Hargraves was erroneously accorded the benefit of application Serial No. 354,136 filed March 5, 1982 on declaration of the interference. No motion to deny him benefit thereof has been filed by Alsenz but it is clear from the testimony of Hargraves (HR 189-193, 236-237) and a review of the Hargraves parent application and the application that matured into the involved Hargraves patent that he does not have support under 35 USC 112, first paragraph, for the "metering orifice" of count 1 or for the "integrator means" portion of the control means of count 3 in the parent application. These features were first shown as described with respect to Figs. 7 to 9 of the application filed November 1, 1982. Thus, we hold sua sponte that Hargraves is not entitled to the benefit of application Serial No. 354,136 filed March 5, 1982.
Judgment as to the subject matter in counts 1 and 3 is hereby awarded to David P. Hargraves, the senior party. He is entitled to a patent containing claims 1 to 17 corresponding to the counts. Richard H. Alsenz, the junior party, is not entitled to a patent containing claims 1 to 17 corresponding to the counts.
BOARD OF PATENT APPEALS AND INTERFERENCES
Stanley M. Urynowicz, Jr.
James R. Boler
Marion Parsons, Jr
FN1. The record for Alsenz will be referred to as "AR" followed by the page number and the exhibits for Alsenz will be referred to as "AX" followed by the exhibit number. The record and exhibits for Hargraves will likewise be referred to as "HR" and "HX", respectively.