BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 HORTON ET AL. v. STEVENS ET AL. Patent Interference No. 101,446

Board of Patent Appeals and Interferences

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





Patent Interference No. 101,446

March 8, 1988





 Patent granted to Robert L. Horton and G. Allan Stahl issued April 16, 1985,  Patent No. 4,511,677, filed November 2, 1983, Serial No. 548,051.



 Application of Timothy S. Stevens, Martin A. Langhorst and Osro W. Randall III, filed May 2, 1983, Serial No. 490,268.



Fish, Klooster, Carver, Hitchcock, Klooster, Phillips, Richmond, Robbins, Umphlett and Williams for Horton et al.



Halldorson, Waterman, Sandt, Crary and Jowanovitz for Stevens, et al.



Before Smith, Tarring and Caroff














 This interfernece involves a patent of the junior party, Horton et al  (Horton), and an application of the senior party, Stevens et al (Stevens). The Horton patent is assigned to Phillips Petroleum Company and the Stevens application is assigned to Dow Chemical Company.



 The subject matter involved in this interference relates to an ion exchange process using a particular ion exchange medium. The subject matter in issue is more particularly defined by the following count, which is the only count involved in the interference:



Count 1



   An ion exchange process comprising the use of a water soluble polymer having multiple ionic functional groups and an ion exchange functional substrate which is at least one of an insoluble hard particle, clay, uranium ore, zeolite, mineral, charcoal or carbon black.



 The claims of the parties which correspond to this count are:

   Horton: Claims 1-5

   Stevens: Claims 9-23



 Both parties took affidavit testimony and submitted documentary evidence in an attempt to establish a date of invention prior to their respective filing dates. Stevens is the senior party in the interference by virtue of having an earlier application filing date. Both parties filed briefs and waived their right to present oral argument at a final hearing [FN1].





 The following issues were raised in the parties' briefs and, therefore, are the only issues before us for consideration:

   1. Are Stevens claims 9-17 and 20-23 unpatentable under 35 USC 102 or  35 USC 103 in view of the disclosure in U.S. Patent No. 3,250,704 (Levendusky)?

   2. Is Stevens claim 23 unpatentable under 35 USC 112, first paragraph, for being broader than warranted by the disclosure in the Stevens application?

   3. Should Stevens claims 9-16 and 20-22 be designated as not corresponding to the count? [FN2]

   4. Is the evidence adduced by Horton, the junior party, sufficient to establish a date of invention prior to Stevens' filing date?

   5. If Horton is found to have established a date of invention prior to Stevens' filing date, has Stevens established an even earlier date of invention?



I. Patentability of Stevens Claims 9-17 and 20-23 over the Levendusky Reference



  *2 As the proponent of unpatentability, Horton has the burden of establishing under 35 USC 102 or 35 USC 103 that Stevens claims 9-17 and 20-23 are either anticipated or rendered obvious by Levendusky. Certainly, this burden is no lesser than the one imposed on an examiner rejecting claims or on a requestor for reexamination. With respect to a determination of obviousness, it is well established that the following factual inquiries are necessary as set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966):

   1. Determination of the scope and content of the prior art;

   2. Ascertaining the differences between the prior art and the claims in issue; and

   3. Resolving the level of ordinary skill in the pertinent art.



 We find that Horton has failed to present an appropriate analysis of the prior art reference vis-a-vis the claimed subject matter which would be sufficient to make out a case for anticipation or obviousness. There is little explanation in the Horton brief to provide adequate factual support for the conclusory statements set forth therein. If Horton considered the subject matter of any Stevens claim to have been anticipated or rendered obvious by Levendusky, he should have analyzed the reference in detail in accordance with the guidelines set forth in Graham v. John Deere Co., supra. Specifically, he should have separately addressed each claim limitation in explaining where in the reference relevant subject matter is disclosed, what the differences are, and why the claimed invention as a whole would have been obvious to a person having ordinary skill in the art. Horton did not do this. In this regard, we note that the following claim limitations are not separately addressed in the Horton brief:

   (1) With respect to Stevens claim 23, the limitation requiring use of an ion exchange functional substrate which is a 'hard particle'. We find nothing to suggest that the ion exchange resin particles of Levendusky are 'hard', as that term is defined in the Stevens application from which it originates. See, in particular, page 4, lines 5-15, of the Stevens application. It would appear that Horton equates the insolubility of the Levendusky particles with hardness (see the Horton brief--page 3, lines 11-16). We find no basis for this conclusion.

   (2) With respect to Stevens claims 9-17, the limitation requiring use of a substrate consisting essentially of 'non-swelling particles'. [FN3] We find nothing to suggest that the resin particles of Levendusky are 'non-swelling' in nature. To the contrary, Levendusky (col. 2, lines 33-36) indicates that his resin particles increase in volume. At any rate, the Levendusky disclosure is certainly devoid of any teaching regarding use of non-swelling particles.

   (3) With respect to Stevens claims 9-17 and 20-22, the limitation requiring use of a water soluble anion-exchange resin which is 'irreversibly attached' to available surfaces of cation-exchange substrate particles. We find nothing to suggest that the water soluble resinous polyelectrolytes of Levendusky, which are initially added to a slurry including ion-exchange particles, are irreversibly attached to those particles. In this regard, we note that the particles separate from the slurry to form a pre-coat layer on a filter screen (Levendusky: col. 4, 1. 25-29). It is apparently this aspect of Stevens claims 9-17 and 20-22, i.e. the irreversible attachment of a water soluble resin to substrate particles, which was considered by the primary examiner to patentably distinguish the claimed invention from Levendusky. In this regard, see Paper Nos. 5, 7 and 8 in the involved Stevens application.



  *3 For the foregoing reasons, we are not persuaded that Stevens claims 9- 17 and 20-23 are unpatentable over the Levendusky reference.



II. Compliance of Stevens Claim 23 with the Provisions of 35 USC 112, First Paragraph



 Stevens involved claim 23 was presented in response to a requirement by the primary examiner, who considered claim 23 to be allowable to Stevens. See the Stevens application--Paper No. 12. The Examiner-in-Chief concluded in his Decision on Motions of July 1, 1986 (Paper No. 25) that there is no lack of support for claim 23 in the Stevens disclosure. We concur.



 Horton, as the party asserting lack of compliance by Stevens with the provisions of 35 USC 112, has the burden of presenting cogent technical reasoning or objective evidence in support of its position. Merely pointing out that Stevens claim 23 is broad, in that it reads on undisclosed as well as disclosed embodiments, is not sufficient. The mere fact that a claim embraces undisclosed or inoperative species or embodiments does not necessarily render it unduly broad. In re Dinh-Nguven, 492 F.2d 856, 181 USPQ 46 (CCPA 1974); In re Bowen, 492 F.2d 859, 181 USPQ 48 (CCPA 1974); In re Smythe, 480 F.2d 1376, 178 USPQ 286 (CCPA 1973); In re Kamal, 398 F.2d 867, 158 USPQ 320 (CCPA 1968); In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964). Accordingly, we are not persuaded that Stevens claim 23 is broader than justified by its supporting disclosure.



III. Correspondence of Stevens Claims 9-16 and 20-22 to the Count



 The issue of whether Stevens' product claims should be designated as not corresponding to the count has been raised for the first time in the Horton brief. Horton is not entitled to raise this issue for consideration at this stage of the proceedings in the absence of a showing of good cause as to why the matter was not raised in a timely filed preliminary motion under 37 CFR 1.633(c). See 37 CFR 1.655(b). Even had the matter been timely raised, it is noted that Horton would have been obligated to present a showing of patentable distinctness pursuant to 37 CFR 1.637(c)(4)(ii). The mere fact that claims may be directed to a different statutory category of invention vis-a-vis the invention defined by the count does not, without more, establish patentable distinctness.



IV. Horton's Case for Priority



 Horton, being the junior party, has the burden of proving prior inventorship by a preponderance of the evidence. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976). Horton relies on an evidentiary record consisting of the affidavit of one joint inventor, Robert L. Horton; a declaration by one Edward L. Bowman embodied in a Corrected Preliminary Statement; and associated exhibits (A-I).



  *4 We find that Horton's evidentiary record fails to establish a date of invention prior to Stevens' filing date for lack of sufficient corroboration.



 In reviewing Horton's record we have kept in mind that the testimony of an inventor is not by itself effective to prove conception and reduction to practice in the absence of corroboration. The purpose of the rule requiring corroboration is to prevent fraud and to establish, by proof that is unlikely to have been fabricated or falsified, that the inventor successfully reduced his invention to practice. Berry v. Webb, 412 F.2d 261, 162 USPQ 170 (CCPA 1969). The evidence necessary for corroboration is determined by the rule of reason which involves an examination, analysis and evaluation of the record as a whole to the end that a reasoned determination as to the credibility of the inventor's story may be reached. Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980); Mann v. Werner, 347 F.2d 636, 146 USPQ 199 (CCPA 1965). Although adoption of the 'rule of reason' has eased the requirement of corroboration with respect to the quantum of evidence necessary to establish the inventor's credibility, it has not altered the requirement that corroborative evidence must not depend solely on the inventor himself and must be independent of information received from the inventor. Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936 (CCPA 1981); Mikus v. Wachtel, 542 F.2d 1157, 191 USPQ 571 (CCPA 1976).



 Horton primarily relies on documents, which are reputed to have been contemporaneously prepared, to corroborate inventor testimony. We believe that these documents alone do not constitute sufficient circumstantial evidence of an independent nature to satisfy the corroboration rule. It is well established that in order for a contemporaneous document to be accorded any corroborative value the testimony of a witness other than the inventor, who is shown to have understood the recorded information, is generally necessary to authenticate the document's contents as well as to explain the witness' relationship to the document in question. White v. Habenstein, 219 USPQ 1213 (Bd.Pat.Int. 1983); Berry v. Webb, supra.



 In the absence of independent testimony, we cannot accept the documentary records submitted by Horton, bearing the signatures of persons who have not testified and who have not been shown to be unavailable to testify, as adequate corroborative evidence of the inventors' activities. Cf. White v. Habenstein, supra.



 The party Horton urges in its reply brief that we accept the Corrected Preliminary Statement of record as corroborative of the facts alleged by Horton since the preliminary statement is in the form of a declaration by Bowan, attorney of record for Horton. We note that a preliminary statement per se cannot be used as evidence in an interference proceeding. 37 CFR 1.629(e). However, it would appear that the corrected Horton preliminary statement has been introduced into evidence and, therefore, we conclude that the Bowman declaration must be considered on its merits independent of its original association with a preliminary statement. Considering the Bowman declaration, we nevertheless find it to be of little corroborative value since there is no reason to believe that the declarant had direct first-hand knowledge of any of the facts asserted therein. In this regard, it would appear that most, if not all, the declarant's statements of fact were based on 'information and belief' rather than on the declarant's own knowledge of the matters involved.



V. Stevens' Case for Priority



  *5 Senior party Stevens found it unnecessary to discuss its own priority proofs in its brief based on the belief that Horton's evidentiary record is insufficient to establish prior inventorship. Likewise, we find it unnecessary to consider Stevens' priority proofs in view of our determination that Horton's case for priority fails for lack of adequate corroboration.



 For the foregoing reasons, a decision on priority in favor of the party Stevens as to all of its involved claims is now appropriate.





 Judgment as to the subject matter of the count in issue is hereby awarded to Stevens, the senior party.



 Accordingly, (1) Timothy S. Stevens, Martin A. Langhorst and Osro W. Randall III are entitled to a patent containing their claims 9-23 corresponding to the count; (2) Robert L. Horton and G. Allan Stahl, the junior party, are not entitled to their patent containing claims 1-5 corresponding to the count.






Ronald H. Smith






Henry W. Tarring II






Marc L. Caroff






FN1. See Paper Nos. 51 and 52.



FN2. Horton actually argues in his brief that Stevens claims 9-16 and 20-22 are 'not within the scope of the count'. However, under the new Rules (37 CFR 1.601 et seq.) this argument is taken as suggesting that the claims in question are directed to a separate patentable invention relative to the invention defined by the count or, in other words, that those claims do not 'correspond' to the count. In this connection, attention is directed to 37 CFR 1.601(f) and (n).



FN3. The copy of claims 9-17 appearing in Appendix C of the Horton brief does not include this limitation. However, it appears that the limitation was added by an amendment (Stevens application--Paper No. 10) which was implicitly authorized by the Examiner for entry (Stevens application--Paper Nos. 9 and 12). Accordingly, claims 9-17, as amended, are limited to use of substrate particles which are of the 'non-swelling' variety.



Marc L. Caroff






 Horton et al (Horton) has filed a request for reconsideration (Paper No. 56; c.o.m. March 21, 1988) of that portion of our decision of March 8, 1988 (Paper No. 55) wherein we found insufficient corroboration of Horton's case for prior inventorship.



 We have considered the points raised in the request for reconsideration, but we are not convinced that we misapprehended or overlooked the significance of any of the evidentiary material submitted by Horton.



 According to Horton, the declaration of Bowman which is embodied in the Corrected Preliminary Statement of record, coupled with Exhibits A-I, provide sufficient corroboration of the affidavit of joint inventor Horton. We do not agree. As we pointed out in our decision, there is nothing in the record which indicates that Bowman himself had direct first-hand knowledge of any of the facts set forth in his declaration. In this regard, we note that an attorney of record, such as Bowman, is not expected to have first-hand knowledge of the facts in order to affix his signature to a preliminary statement, be it in the form of a declaration or not. 37 CFR 1.621(a). Horton does not point to anything in the record which indicates that Bowman was contemporaneously involved either in the work allegedly performed by the Horton inventors or in the preparation or handling of the documents representated by Exhibits A-I.



  *6 Bowman, in his declaration, refers to the date stamp at the top of the first page of Exhibit A as evidence of receipt of the original document by the Patent Division of Phillips Petroleum Company (Phillips) on July 17, 1980. Bowman does not indicate whether the affixation of the date stamp relates to any standard practice of Phillips' Patent Division to stamp all incoming documents with the date of receipt. Even if we were to draw such an inference from the declarant's remarks, the Bowman declaration would merely establish that the document in question was in existence at that time, but not that the work reported was actually done. Thus, the Bowman declaration at best corroborates conception, but not actual reduction to practice, of the invention in issue. In this regard, it is noted that Horton's case for prior inventorship is based solely upon an attempt to establish a first actual reduction to practice, and no argument has been presented by Horton regarding any proof of reasonable diligence from a time just prior to an opponent's conception date up to an actual or constructive reduction to practice.



 As for the exhibits proffered by Horton, they cannot by themselves serve to corroborate the actual performance of work reported therein, even though they may very well be reproductions of documents from official company records. The so-called Shop-Book rule (now Rule 803(6) of the Federal Rules of Evidence) does not apply to reports of scientific work in an interference proceeding. Such reports generally cannot be relied upon to prove the facts asserted therein, and therefore cannot be relied on to establish reduction to practice, since they are self-serving and not an independent corroboration of an inventor's testimony. Alpert v. Slatin, 305 F.2d 891, 134 USPQ 296 (CCPA 1962). Horton's reliance on Berges v. Gottstein, 618 F.2d 771, 205 USPQ 691 (CCPA 1980) is misplaced since that case, unlike the present one, involved a substantial body of independent testimony as well as documentary evidence which, in toto, was found to provide sufficient circumstantial evidence of an independent nature to satisfy the requirement for corroboration.



 For the foregoing reasons, the Horton request for reconsideration is denied.


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