BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 ASARI v. ZILGES ET AL. Patent Interference No. 101,220

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,220

September 18, 1987

Final Hearing: April 22, 1987


Method And Apparatus For Ejecting Jammed Billets From Metal Extrusion Press



 Application of Akira Asari filed on July 20, 1987, Serial No. 285,287. Accorded benefit of Japanese Application No. 55-102849 filed July 25, 1980.



 Application of Franz-Josef Zilges and Johannes-Ulrich Weiss filed on June 18, 1981, Serial No. 275,030. Accorded benefit of German Application No. P 30 23 388.6 filed June 23, 1980.



Oblon, Fisher, Spivak, McClelland, Maier, Neustadt, Miller, Kelly and Hamilton for Asari. Oral argument by Charles L. Gholz



John Clarke Holman, Marvin R. Stern and Randall G. Erdley for Zilges et al. Oral argument by Randall G. Erdley



Before Calvert



Vice Chairman



Boler and Cohen









Vice Chairman



 The subject matter in issue in this interference is defined by the two counts, counts 2 and 3, as follows: [FN1]



Count 2



   An indirect metal extrusion press comprising apparatus for handling a jammed billet, said press comprising:

   (a) a container of billets;

   (b) a pressurizing stem positioned to act on one face of a billet in said container;

   (c) a die stem containing a die positioned to act on the opposite face of a billet in said container;

   (d) first means for forcing said pressurizing stem and said die stem towards each other, thereby normally forcing said die stem into said container and forcing the billet out through said die; and

   (e) an ejecting stem which is selectively substituted for said pressurizing stem, said ejecting stem having a plurality of longitudinal grooves in the surface of said ejecting stem, which grooves extend in the direction of motion of said ejecting stem, the cross-sectional area of said plurality of longitudinal grooves being greater than the cross-sectional area of the opening in said die,

   whereby, when a billet becomes jammed in said container, said ejecting stem is substituted for said pressurizing stem and the billet is forced out through said plurality of longitudinal grooves.



Count 3



   A method for removing a jammed billet from a container in an indirect metal extrusion press comprising the container, a pressurizing stem which acts on one face of the billet, and a die stem containing a die which acts on the opposite face of the billet, in which a billet is normally extruded from the container through the die by forcing the die stem and the pressurizing stem towards one another, thereby forcing the die stem into the container and forcing the billet out through the die, said method comprising the steps of:

   (a) providing an axial opening in the face of the pressurizing stem which is adjacent the billet, which axial opening has a greater cross-sectional area than the opening in the die, and

   (b) forcing the die stem and the pressurizing stem towards one another, thereby forcing the pressurizing stem into the container and forcing the billet out through the axial opening in the pressurizing stem.

*2 Counts 2 and 3 correspond exactly to claims 11 and 15 of the Asari involved application, and to claims 21 and 23 of the Zilges et al involved application, respectively. The Asari application is assigned to Kabushiki Kaisha Kobe Seiko Sho of Japan, and the Zilges et al application to SMS Schloemann-Siemag Aktiengesellschaft of West Germany.



 Asari did not file an evidentiary record.  Zilges et al filed a record consisting of a deposition and associated exhibits. Both parties filed briefs under 37 CFR 1.254, and appeared through counsel at final hearing.



 In their preliminary statements, the parties each stated that they were relying solely on their respective foreign applications (of which they have been accorded benefit); Asari also stated that he intended to prove that the invention was derived by Zilges et al. In addition to this alleged derivation, the parties have raised numerous other issues, which are treated under separate headings below.



Right to Make--Zilges et al



 When Zilges et al filed their motion under 37 CFR 1.231(a)(2) (note 1,  supra), the motion was opposed by Asari on the ground, inter alia, that Zilges et al did not support their claim 23 corresponding to the proposed count. Asari raises that issue for our consideration at final hearing.



 The thrust of Asari's argument is that step (a) of the count (and the claim of Zilges et al) calls for providing an axial opening in the face of the pressurizing stem used to act on one face of the billet to normally extrude it through the die, whereas in the method shown in Figures 2A to 2E of Zilges et al, when a billet 25 becomes stuck in the container 26, the normal pressurizing stem 31 is replaced by a hollow stem 36 having an axial opening in its face. Asari acknowledges the Zilges et al argument that the specification contains three brief passages which would support claim 23, but asserts that they are "brief, cryptic passages" which "fall woefully short of providing adequate 35 USC 112 first paragraph support" (main brief, p. 10).



 The third of the "brief passages" referred to reads as follows (Zilges et al application, page 15, lines 23 to 27):

   It is also possible to dispense with a special closure stem 31, if the hollow stem 36 or profile stem 41 is so sized and constructed as to allow the closure disc 32a or 32b to be directly supported on it during extrusion.

While this passage may be brief, we consider it sufficient to provide support for step (a) of claim 23. The subject matter involved is not so complex that any more extensive disclosure would be required to describe or enable one of ordinary skill in the art to practice the method using a pressurizing stem with an axial opening as called for by the claim. Contrary to Asari's arguments, the Zilges et al hollow stem 36 has a greater cross-sectional area than the opening in die 29 (see Fig. 2C and page 10, lines 18 to 22 of the specification), and the die stem 28 and pressurizing stem 36 would be forced relatively towards each other as indicated in the paragraph bridging pages 40 and 41 of the Zilges et al brief.



  *3 Asari also contends that the Zilges et al prior German application does not support the method of count 3, for the same reason. Since the disclosure of the German application is substantially the same as that of the Zilges et al involved application, this contention is not sustainable for the same reasons.



Derivation--Zilges et al



 During the interlocutory stage of this proceeding, Asari filed a motion for additional discovery under 37 CFR 1.287(c) (Paper No. 49, filed June 10, 1985), including, inter alia, interrogatories and requests for production of documents relating to the alleged derivation of the invention from Asari by Zilges et al. The motion was opposed by Zilges et al in Paper No. 53 (filed July 1, 1985) on general grounds, e.g., as being premature and an improper "fishing expedition."



 On July 22, 1985 (Paper No. 58), a panel of this Board issued an order granting the Asari motion to the extent of requiring Zilges et al to answer interrogatories 1, 2, 5 and 6, and to produce the documents encompassed by requests 1, 2, 3, 6 and 7, within thirty days. In Paper No. 65, Zilges et al answered interrogatories 1 and 2; stated in response to interrogatories 5 and 6 that Mr. Weiss was living in Brazil and was not readily available and had not yet furnished an answer; and objected to all four interrogatories under Federal Rule of Civil Procedure 33 on the grounds that (1) interrogatories 1 and 2 were irrelevant and immaterial to the issue of derivation, and (2) interrogatories 5 and 6 were speculative and too broad. Asari thereupon filed a motion under 37 CFR 1.287(d)(2) seeking an award of priority against Zilges et al for refusing to answer interrogatories 5 and 6 and produce documents per requests 6 and 7 (Paper No. 67, filed August 30, 1985).



 A panel of this Board treated the Asari motion in Paper No. 84 (October 24, 1985). The Board considered interrogatory 5 and found that the Zilges et al answer thereto was "clearly not responsive", as follows:

   If Zilges et al needed more time to answer, they could have requested an extension of time. The objection to the interrogatory is untimely. The proper time for Zilges et al to object to the interrogatory was in its opposition to the Asari motion for additional discovery. In their opposition to the motion for additional discovery, Zilges et al did not address any remarks to Interrogatory 5 specifically but merely opposed the interrogatories as a whole. We found that the opposition was not persuasive and granted additional discovery to the extent indicated in Paper No. 58. The showing presented by Asari was deemed adequate to show prima facie conception by him prior to the April 1980 meeting with Weiss and his allegation of communication to Weiss can be considered established since it is unrebutted by Weiss. Mead v McKirnan, 585 F.2d 504, 199 USPQ 513 (CCPA 1978).

*4 Accordingly, the Board ordered:

   ... pursuant to 37 CFR 1.287(d)(2), the fact of communication of the invention from Asari to Weiss, one of the Zilges et al inventors, is held to be established as of a date no later than April 19, 1980 in view of the Zilges et al nonresponsive answer to Interrogatory No. 5. We need not consider the other matters not properly responded to by Zilges et al. The Asari et al request for an award of priority based on the nonresponsive answers given by Zilges et al is denied. Zilges et al can show a lack of derivation by proving a date of conception prior to the April 1980 meeting between Asari and Weiss.



 Zilges et al contend in their brief that this decision of the Board was erroneous because their objection to interrogatory 5 "was a proper alternative response under FRCP 33." They also argue, in effect, that the Asari discovery motion should not have been granted as to interrogatory 5 because it was in effect a fishing expedition.



 We consider the reliance of Zilges et al on FRCP 33 to be misplaced. While 37 CFR 1.287(c) provides that the Board may order additional discovery "within the scope of the discovery rules of the Federal Rules of Civil Procedure", it does not provide that the discovery procedure of the FRCP is applicable. Under the FRCP, no leave of court or motion for discovery is necessary; interrogatories are merely served on the opponent. FRCP 33(a). Thus, the opponent's first opportunity to object is upon receipt of the interrogatories. By contrast, under the interference rules, a party seeking discovery via interrogatories must file a motion for additional discovery under 37 CFR 1.287(c) therefor (unless the opponent will answer them voluntarily). If the opponent wishes to object to particular proposed interrogatories, he must raise his objections in opposition to the motion. He cannot, as Zilges et al did here, oppose the motion only in general terms and then, after the Board grants the motion, object to specific interrogatories or other items.



 Zilges et al cite an unpublished decision in Burger v. Borup, Interference No. 100,470, for the proposition that Asari should not have been granted additional discovery because he never made out a prima facie case of prior conception and communication of the invention. We will assume that since the Burger interference is available to the public under 37 CFR 1.11(e) and a copy of this decision was served and filed (with Paper No. 99), it may properly be cited. Clevenger v. Martin, 230 USPQ 374, footnote 2 (Comr.1986). However, the decision is not considered pertinent because it concerned a motion to take testimony under 37 CFR 1.225(b), rather than a motion for additional discovery under § 1.287(c).



  *5 A number of published decisions of the Board of Patent Interferences deal with the question of additional discovery concerning derivation, including Schubert v. McKernan, 188 USPQ 496 (1975); Woodriff v. Prugger, 189 USPQ 578 (1975); and Jurek v. Foote, 220 USPQ 888 (1982). These cases indicate that to obtain additional discovery, the moving party must be "willing, in clear and unequivocal terms, to allege that he communicated the invention to the party which he claims derived the invention from him." Woodriff, 189 USPQ at 580 (emphasis added). The Asari motion was sufficient to meet this requirement, in that it referred to the declarations submitted with the Asari motion for a special testimony period (Paper No. 48), where such communication is alleged. We therefore consider the decision complained of to have been correct.



 In order to rebut the charge of derivation by proving conception prior to the April 19, 1980 date of communication held to be established by the Board, supra, [FN2] Zilges et al took the testimony of a single witness, Helmut B. Huertgen. Huertgen, the chief design engineer at Sutton Engineering, a Pittsburgh company acquired by SMS (Zilges' assignee) in 1979, had extensive experience with extrusion presses (ZR-5, 6, 12). [FN3] In 1980, Huertgen worked with Franz-Josef Zilges, one of the senior party applicants, on an indirect extrusion press project for Alusuisse, a Swiss aluminum company (ZR-11). On February 29, 1980, there was a meeting at Alusuisse headquarters in Zurich attended by, inter alia, Huertgen, Zilges, and Johannes-Ulrich Weiss, the other senior party applicant, an employee of Alusuisse (ZR-13). At the meeting, the problem of stuck billets ("stickers") was discussed, and Weiss proposed a suggestion for solving the problem (ZR-22, 23). ZX-1 is a report of the meeting, dictated by Zilges while Huertgen was there (ZR-24, 26, 34). Weiss' proposal is described on page 14 as follows:

   In case this [heating the stuck billet] should not be possible, Mr. Weiss  (Alusuisse) proposed to replace the closing stem by a profiled stem unit with die in front and to extrude part of the billet at a very low extrusion ratio toward the moving crosshead and to manually cut off the extruded strands. The remainder of the billet can then be removed from the press by customary methods.

Huertgen also testified that around this time Zilges made an alternative suggestion of "using a die to back extrude part of the [stuck] billet into a hollow stem or hollow sleeve" (ZR-39), and believed that it was discussed at the February 29th meeting (ZR-40).



 ZX-3 is a "Note to Patent Department" composed by Zilges and Huertgen and dated March 7, 1980. The sticker removal problem is discussed on pages 3 to 5, and proposes two alternative solutions. Alternative 1, which was Zilges' suggestion (ZR-42), is:

    *6 The closing piece is removed from the container with suitable means and is replaced by a closing piece with die having a large-size passage opening. The closing stem is replaced by a hollow stem.

   By means of the press and in an indirect manner a rod is then pressed into the hollow stem and after the press has moved apart will be cut off and removed from the stem: this procedure will be repeated twice to three times so that a residual billet length remains in the container which can be removed in conventional manner by interposing a bush between container and moving crosshead.

Alternative 2, described as "a proposal by Mr. Weiss, ALUSUISSE, Zurich, that was presented on occasion of first discussions in Zurich on 29th February, 1980," is disclosed:

   As an alternative to the foregoing approach it could be possible also to use a profiled stem in place of the closing stem which can be cross-shaped for instance, so that four rods could be extruded rearward which each could be exposed for manual cut-off and could be removed more easily than in case of Alternative 1.



 Ostlinning, a draftsman who worked for Zilges, made drawings for the project in February and March, 1980, under the supervision of Zilges and Huertgen (ZR-56 to 58). ZX-6, made on March 7, 1980, is a drawing showing Zilges' suggestion (ZR-70 to 72), and drawing ZX-7, dated March 26, 1980, shows Weiss' suggestion (ZR-73 to 75). The figures of ZX-6 are essentially the same as Figures 2A to 2E of the Zilges et al application drawings, and the figures of 2X-7 correspond to Figures 3A to 3G and 4A to 4C. (ZR-81, 82).



 Considering this evidence first with respect to count 3, we do not consider that it establishes conception thereof. It is well settled that every limitation of the count must have been known to the inventor at the time of the alleged conception. Davis v. Reddy, 620 F.2d 885, 205 USPQ 1065 (CCPA 1980); Coleman v. Dines, 754 F.2d 353, 224 USPQ 857 (Fed.Cir.1985). As discussed above in the "Right to Make" section, this count requires that the normal pressurizing stem have an axial opening. The ZX-6 figures, like the drawings of the Zilges et al application, do not show such a stem. While we found above that the Zilges et al application supports its claim corresponding to count 3 because of certain statements in the specification, there is no comparable evidence in the record to indicate that, at the time the ZX-6 drawing was made, Zilges had such a modification in mind. In other words, there is no evidence that Zilges contemplated using a hollow stem in the first two figures of ZX-6, so that the special hollow stem shown in the last three figures of ZX-6 could be dispensed with.



 Accordingly, since Zilges et al have failed to show conception of the subject matter of count 3 prior to the established date of communication, they have not rebutted the charge of derivation as to count 3.



  *7 On the other hand, the evidence does show conception of the subject matter of count 2 prior to April 19, 1980, the apparatus recited by that count being clearly shown in the ZX-7 drawing. [FN4] Asari argues, however, that he should still prevail because Zilges et al did not prove prior joint conception of the count. We are not impressed with this argument. Even assuming that count 2 was the sole prior invention of Weiss, the subject matter of that count had been communicated to Zilges by Weiss so that both Zilges and Weiss were in possession of conception of that subject matter prior to the April 19 date of communication by Asari. We do not consider that if one coinventor independently conceives of an invention and communicates it to the other coinventor, prior to any communication by the opponent, a case of derivation has been established. The basis of derivation is that only one party conceives the invention, and that the other obtains it from the first, "by fair means or foul." [FN5] In the present case, the conception of count 2 which Zilges and Weiss had was not obtained from Asari, and therefore there was no derivation.



Inequitable Conduct (1)--Zilges et al



 Asari asserts that Zilges et al were guilty of inequitable conduct in that they asserted when their application was filed that they were joint inventors when in fact they were not, and that this situation was not retroactively cured by the amendments to 35 USC 116 effective November 8, 1984 (Public Law 98-622). According to Asari, the alleged misstatement was very material because the conception of Weiss would have been prior art as to Zilges, or vice versa, under 35 USC 102(f).



 Fraud or inequitable conduct must be proven by clear and convincing evidence. Norton v. Curtiss, 433 F.2d 779, 167 USPQ 532 (CCPA 1970). Asari took no testimony in this case, but contends that the following paragraph from Zilges' March 7 note (ZX-3, supra) constitutes a "smoking gun":

   Alternative 2 is a proposal by Mr. Weiss, ALUSUISSE, Zurich, that was presented on occasion of first discussions in Zurich on 29th February, 1980. This application would in any case have to be filed separately from the system application as ALUSUISSE has rightful claims in that case.



 Contrary to Asari's arguments, we do not regard this evidence as proof of  "culpable intent." The fact that Weiss made a proposal does not necessarily mean that, legally, he was the sole inventor. The present case contains no evidence as to what transpired subsequently with regard to the application, or as to why the application was filed in the names of Zilges and Weiss jointly. Even assuming that Zilges and Weiss were the sole inventors of counts 3 and 2, respectively, there is no clear and convincing evidence that the filing of a joint application would have been the result of intentional fraud, gross negligence, or anything other than simple error.



Inequitable Conduct (2)--Zilges et al



  *8 An order to show cause (Paper No. 45) having been issued against him, Asari sought a special testimony period to show, inter alia, inequitable conduct by Zilges et al in failing to disclose to the PTO references cited against their corresponding European application (motion filed June 10, 1985 (Paper No. 48), renewed July 24, 1985 (Paper No. 61)). The evidence Asari sought to introduce was to the effect that six references were cited, and one applied, against the Zilges et al European application, and that in none of 34 United States patents assigned to SMS in which foreign priority was claimed, was the foreign search report brought to the attention of the PTO. Citing Federal Rule of Evidence 406, [FN6] Asari contended that the Zilges et al non-disclosure was part of a long-standing pattern. In decisions dated September 5, 1985 (Paper No. 68) and October 24, 1985 (Paper No. 84), a panel of this Board refused to grant Asari the requested special testimony period because, in essence, there was no showing that the withheld references were material to the examination of the involved U.S. application of Zilges et al, i.e., that "there would be a substantial likelihood that a reasonable examiner would consider any of the six references important in deciding whether to allow the application to issue as a patent" (Paper No. 68, page 4).



 Asari argues in his main brief that his motion for a special testimony period should have been granted. He contends that the showing made in support of the motion demonstrated the materiality of the alleged misconduct, quoting MPEP § 2001.06(a):

   2001.06(a) Prior Art Cited in Related Foreign Applications

   Applicants and other individuals, as set forth in § 1.56, have a duty to bring to the attention of the Office any material prior art or other information cited or brought to their attention in any related foreign application. The inference that such prior art or other information is material is especially strong where it is the only prior art cited or where it has been used in rejecting the same or similar claims in the foreign application. See Gemveto Jewelry Company, Inc. v. Lambert Bros., Inc., [542 F.Supp. 933,] 216 USPQ 976 (S.D. New York 1982) wherein a patent was held invalid or unenforceable because patentee's foreign counsel did not disclose to patentee's United States counsel or to the Office prior art cited by the Dutch Patent Office in connection with the patentee's corresponding Dutch application.



 We are not convinced that the nondisclosure of a reference which was cited against a related foreign application is necessarily sufficient, per se, to make out a showing of materiality. In the Gemveto Jewelry case, the nondisclosed reference "fully anticipated" at least some of the patent claims. Here, by contrast, Asari states in his main brief that he "does not assert that the examiner would ultimately have rejected any of the party Zilges et al's claims over that reference" (page 23, original emphasis), and his counsel acknowledged at the oral hearing that the Zilges et al claims were probably allowable over the reference.



  *9 In order to make a sufficient showing to be granted a special testimony period concerning matters ancillary to priority, a junior party under order to show cause must make a showing of good cause. 37 CFR 1.225(b). See the Commissioner's Notice of June 15, 1981, 1008 O.G. 9, and 3 Rivise & Caesar, Interference Law and Practice, §§ 376-377 (Michie Co., 1947), cited therein. Where the subject of the special testimony is alleged inequitable conduct, a more rigorous standard is applied. Cf. Spaite v. Marsh, 200 USPQ 551 (Comr.1977) and Price v. Folsom, 208 USPQ 56 (Comr.1980). We do not consider that in this case the Board's finding of a lack of a showing of sufficient materiality, and consequent refusal to grant Asari a period for taking testimony concerning alleged inequitable conduct by Zilges et al, was incorrect.



Inequitable Conduct--Asari



 This issue was raised for the first time on May 30, 1986, when Zilges et al filed "Zilges et al's Notice to the Party Asari That the Party Zilges et al Will Assert a Ground of Fraud" (Paper No. 145). Zilges et al alleged in that paper that Asari failed to disclose to the PTO a reference cited against his corresponding Japanese application.



 Zilges et al have not sought to reopen their testimony period, nor otherwise to introduce evidence in accordance with the rules to substantiate their charge of fraud (inequitable conduct). The mere attachment of copies of documents to Paper No. 145 does not serve to introduce them into evidence. See Bloch v. Sze, 203 USPQ 527, 530 (Bd.Pat.Int.1977). There being no evidence to consider, 37 CFR 1.271, there is no basis for a finding of inequitable conduct. [FN7]



Conversion of Inventorship--Asari



 Asari's involved application was originally filed in the names of Akira Asari and Tsuneharu Masuda. A motion by the junior party under 37 CFR 1.231(a)(5) to delete Masuda as an inventor (Paper No 19) was granted by the Primary Examiner over the opposition of Zilges et al on March 21, 1985 (Paper No. 39), the Examiner finding that the requirements of 37 CFR 1.48 had been met.



 In the first paragraph of part VIII of their brief, Zilges et al contend that the Examiner's decision "was in error and should be reversed for the reasons given below." However, since the remainder of part VIII appears to be virtually identical, word for word, with the arguments presented in the Zilges et al opposition to the motion (Paper No. 28, filed September 24, 1984), the "reasons below" are no more than a repetition of what was before the Examiner.



 Moreover, we consider the showing made by Asari to have been adequate to meet the requirements of 37 CFR 1.48, keeping in mind that conversion of inventorship should be liberally permitted. Patterson v. Hauck, 341 F.2d 131, 144 USPQ 481 (CCPA 1965). We find no reason to disturb the decision of the Examiner.






    *10 1. The involved and benefit applications of Zilges et al support the Zilges et al claim corresponding to count 3.

   2. Zilges et al derived the subject matter of count 3, but not of count 2, from Asari.

   3. The various charges of inequitable conduct have not been proven.

   4. The grant of the Asari motion to change inventorship was not incorrect.



 In view of the foregoing, priority of invention of the subject matter of count 2 is awarded to Franz-Josef Zilges and Johannes-Ulrich Weiss, the senior party. Priority of invention of the subject matter of count 3 is awarded to Akira Asari, the junior party.






Ian A. Calvert



Vice Chairman



James R. Boler






Irwin C. Cohen






FN1. Having been declared prior to February 11, 1985, this interference is conducted under former rules 37 CFR 1.201 to 1.288. See MPEP § 2300.01. Count 3 was substituted for original count 1 pursuant to a motion by Zilges et al under 37 CFR 1.231(a)(2) (Paper No. 13).



FN2. Cf. Greenwood v. Dover, 23 App.D.C. 251, 1904 C.D. 630, quoted in  Schumaker v. Paulson, 136 F.2d 700, 58 USPQ 279, 282-283 (CCPA 1943).



FN3. Pages of the Zilges record are referred to herein as "ZR," and exhibits as "ZX."



FN4. Since the issue of derivation is involved, proof of conception abroad is not precluded by 35 USC 104. Hedgewick v. Akers, 497 F.2d 905, 182 USPQ 167 (CCPA 1974).



FN5. Applegate v. Scherer, 332 F.2d 571, 141 USPQ 796, n. 1 (CCPA 1964).



FN6. Rule 406. Habit; Routine Practice

   Evidence of the habit of a person or of the routine practice of an organization, whether corroborated or not and regardless of the presence of eyewitnesses, is relevant to prove that the conduct of the person or organization on a particular occasion was in conformity with the habit or routine practice.



FN7. Asari states on page 23 of his reply that while "the board cannot resolve this issue in this interference," he "would welcome a 37 CFR 1.259 recommendation that this issue be investigated and resolved after the termination of the interference." However, since the question of fraud or inequitable conduct is ancillary to priority, § 1.259, which only concerns matters "not relating to priority," is inapplicable.


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