Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 VANDERKOOI ET AL.
Patent Interference No. 101,386
October 30, 1987
Final Hearing: September 15, 1987
Nucleation Agents For Crystalline Polymers
Application of Nicholas Vanderkooi Jr., John C. Haylock, Stephen R. Schulze and Harold W. Tuller, filed September 9, 1983, Reissue Serial No. 530,805.
Patent granted to Guenther K. Hoeschele on September 28, 1982, Patent No. 4,351,757, filed October 24, 1980, Serial No. 200,192.
Patrick L. Henry, Richard A. Negin, Patrick L. Henry, Richard A. Anderson Norman H. Stepno, and Ronald L. Grudziecki for Vanderkooi. Oral argument by Joseph R. Magnone, Richard Negin, Patrick Henry and R. John Haylock
Gary A. Samuels, Francis A. Paintain, Hoge T. Sutherland for Hoeschele. Oral argument by Gary A. Samuels and Elliott Katz
Before Torchin, Caroff and Emery
This interference involves a reissue application of the junior party, Vanderkooi et al. (Vanderkooi), and a patent of the senior party, Hoeschele. The Vanderkooi reissue application is assigned to Allied Corporation (Allied), and the Hoeschele patent is assigned to E.I. DuPont de Nemours and Company (DuPont).
The subject matter involved in this interference relates to a polyester molding composition containing a crystallization agent, i.e., a nucleating agent, which may be defined as an alkali metal salt of a substantially aliphatic polycarboxylic acid containing betwee 30 and 54 carbon atoms and 2 to 4 carboxyl groups and having a molecular weight of less than about 1500; or otherwise defined as a dimer acid and a trimer acid mixture, the mixture having from 0% to 100% trimer acid by weight, the dimer acid having at least 36 carbon atoms and two carboxyl groups, the trimer acid having at least 54 carbon atoms and three carboxyl groups, with the total amount of carboxyl groups being at least 10 percent neutralized. The subject matter in issue is more particularly defined by the following count, which is the only count now involved in this interference. [FN1]
A polyester molding composition, wherein the polyester is a linear saturated polyester which can contain up to 10% by weight of a non-polymeric comonomer or up to 3% of a polymeric comonomer, which composition contains, as a crystallization agent, either
(a) about 0.1-5% based on the weight of the polyester of an alkali metal salt of a substantially aliphatic polycarboxylic acid containing between 30 and 54 carbon atoms and 2 to 4 carboxyl groups and having a molecular weight of less than about 1500, provided the amount of salt present is sufficient to provide a HH/Hc ratio of less than 0.25 to the blend; or
(b) from about 0.2% to about 10% based on the weight of the polyester of a nucleating agent comprising a dimer acid and a trimer acid mixture, the mixture having from 0% to 100% by weight trimer acid, the dimer acid having at least 36 carbon atoms and two carboxyl groups, the trimer acid having at least 54 carbon atoms and three carboxyl groups, with the total amount of carboxyl groups being neutralized from 10 to 100 percent by a cation of a metal selected from Group IA of the Periodic Table of the Elements.
*2 The claims of the parties which correspond to this count are:
Vanderkooi (Reissue): Claims 1-47
Vanderkooi (Patent): Claims 1-38
Hoeschele: Claims 1-8
Both parties took testimony and submitted documentary evidence [FN2] in an attempt to establish a date of invention prior to their respective filing dates. Additionally Hoeschele relies upon a motion for judgment (Paper No. 7) of unpatentability with respect to Vanderkooi Claims 39 and 47, consideration of which having been deferred to final hearing. Both parties filed briefs and appeared, through counsel, at final hearing.
The following issues were raised in the parties' briefs and, therefore, are the only issues before us for adjudication [FN3]:
1. Is the evidence of conception adduced by the senior party sufficient as a matter of law to establish that Dr. Hoeschele conceived the invention in issue prior to the date of invention established by Vanderkooi?
2. Do the activities by DuPont personnel (Garrison and Deyrup) which resulted in a reduction to practice of the invention in issue [FN4] inure to Hoeschele's benefit?
3. Do Vanderkooi claims 39 and 47 comply with the requirements of 35 USC 112 and 35 USC 132?
After carefully evaluating the record before us in light of the opposing arguments of counsel in the briefs and at final hearing, we find that we agree with the views expressed in Hoeschele's brief regarding the legal sufficiency of the evidence of conception in Hoeschele's record. In short, we conclude that the evidence proffered by the senior party is sufficient to establish that Dr. Hoeschele conceived the invention in issue prior to the date of invention relied upon by Vanderkooi.
Vanderkooi's basic position on the question of conception is that Dr. Hoeschele is not entitled to claim that he alone conceived the invention in issue since, according to Vanderkooi, Dr. Hoeschele made no contribution in determining the amounts of crystallization agent to be used in the involved polyester molding composition, i.e., the amounts expressly set forth in the count. However, the law does not require that every limitation in the counts must be exactly foreseen before a conception can be said to be complete; rather, the test of conception is whether the disclosure by the purported inventor was such that no extensive research or experimentation would be required for one of ordinary skill in the art to reduce the concept to practice based upon that disclosure. Vancil v. Arata, 202 USPQ 58 (Bd.Pat.Int. 1977); Summers v. Vogel, 141 USPQ 816 (CCPA 1964); In re Tansel, 253 F.2d 730,117 USPQ 188 (CCPA 1958); Mergenthaler v. Scudder, 11 App. D.C. 264, 1897 C.D. 724 (1897). The standard for proving conception is not essentially different from that required for proving sufficiency of disclosure under 35 USC 112. Spero v. Ringold, 153 USPQ 726 (CCPA 1967).
*3 There is no question that the basic concept embodied in the count, namely the concept of using the sodium salt of dimer acid as a nucleating agent for polyesters, originated with Dr. Hoeschele. [HX-5; HR-115/(3-14); 22 7/22 - 22 8/8 ; 28 0/24 -28 1/3 ; 42 3/3 -42 7/14 ; HX-16, p. 13]. There is no evidence of record to persuade us that more than ordinary skill would have been needed to reduce the concept to practice. On the contrary, we find a clear inference in the record from each of the following facts that only routine skill was involved in actually carrying out a reduction to practice:
(1) Samuels, the attorney assigned to prepare the involved Hoeschele patent application, determined that Dr. Hoeschele was in fact the sole inventor, apparently after discussing the matter with all concerned. [HR 8 5/17 -8 8/14 ]. Samuels exercised sole responsibility for determining inventorship with respect to the invention at issue [HR 9 5/2 -9 7/19 ].
In view of the foregoing, it is reasonable to infer that attorney Samuels, in determining that Dr. Hoeschele was the sole inventor, must have reached the conclusion that Hoeschele's original conception was sufficiently complete to enable Garrison and Deyrup to reduce the involved invention to practice without 'any further exercise of inventive skill'. Cf. Mergenthaler v. Scudder, supra.
(2) Garrison apparently had no difficulty in reducing Hoeschele's concept to practice in a relatively short amount of time, i.e., within two weeks [HR 22 7/22 -23 6/17].
(3) Deyrup and Garrison acknowledged Dr. Hoeschele as the source of the initial suggestion without any indication of a conviction on their part that they made an inventive contribution or invested anything more than routine skill in reducing the concept to practice.
(4) In disclosing a specific function for the sodium salt of dimer acid, i.e., 'as a nucleating agent for polyesters' [HX-5], Hoeschele implicitly suggested that the salt be used in an amount effective to perform that function. Ordinarily, the mere determination of a suitable range of values for a suggested result-effective variable or agent is considered to be prima facie within the realm of ordinary skill. CF. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
As we have previously indicated (footnote 4), there is no question that the work undertaken by Garrison and Deyrup at DuPont constituted a reduction to practice of the invention defined by the count prior to Vanderkooi's uncontested date of invention. Rather, the reduction-to-practice issue raised by Vanderkooi in effect reduces to a question of who, among the workers in a single corporate entity (here DuPont), Should have been given credit for inventing a particular composition (here-defined by the present count). In this sense, it is our opinion that the issue before us is more akin to the question of inventorship confronted by the court in Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978) [FN5], than to the derivation-type question addressed in Polye v. Uhl, 328 F.2d 893, 140 USPQ 584 (CCPA 1964). [FN6] Thus, Gunter, rather than Polye, is controlling with respect to the issues in this interference.
*4 Concerning inventorship, statements in patent applications as to sole or joint invention are prima facie evidence of such fact; and a party, relying upon his application, does not have to prove such facts. Thus, a party who wishes to dispute sole inventorship as stated in an application, as Vanderkooi in effect does in this case, [FN7] has the burden of overcoming the prima facie effect of the application. III Rivise and Caesar, Interference Law and Practice, § 407 (Michie Co. 1947). In other words, Vanderkooi has the burden of proving by a preponderance of the evidence that the work undertaken at DuPont to reduce the subject invention to practice does not inure to the benefit of the sole inventor named in the involved DuPont patent, Dr. Hoeschele. We believe that Vanderkooi has failed to satisfy this burden for the reasons set forth above with respect to the issue of conception and for the following additional reasons:
It is Vanderkooi's position that, in an inventorship sense, the work of Garrison and Deyrup at DuPont does not inure to the benefit of Dr. Hoeschele since, inter alia, Hoeschele worked in a separate and independent department, was primarily engaged in research and development work on polyether elastomers rather than the involved rigid polyester plastics, and did not participate in any of the reduction to practice activities nor direct, supervise or follow-up those activities. However, as noted above, the assignee evidently determined, through patent counsel, that Dr. Hoeschele was the actual inventor by virtue of having formulated the original concept on which the work of Garrison and Deyrup was based. In our view, the factors enumerated by Vanderkooi with respect to the independence exhibited by Garrison and Deyrup are in no way inconsistent with the final determination of inventorship made by the assignee DuPont. As stated in Gunter [FN8]:
'. . . we are not persuaded by appellant's argument that the reduction to practice does not inure to the benefit of Stream [here, Hoeschele], since he took no part in this phase . . .. Having already shown that there was reduction to practice by the assignee, Stream's [Hoeschele's] conception completes the showing necessary to award priority.'
For the foregoing reasons, we conclude that Hoeschele has established an actual reduction to practice of the composition defined by the count prior to the date of invention established by Vanderkooi.
Based upon the foregoing, a decision on priority favor of Hoeschele is appropriate. Accordingly, the issue of compliance of Vanderkooi claims 39 and 47 with the requirements of 35 USC 112 and 35 USC 132 is moot.
Judgment as to the subject matter of the count in issue is awarded to Guenther K. Hoeschele, the senior party. Accordingly, (1) Guenther K. Hoeschele is entitled to a patent containing claims 1-8 which correspond to the count; (2) Nicholas Vanderkooi Jr., John C. Haylock and Stephen R. Schulze are not entitled to a patent containing their claims 1-47 which correspond to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
Norman G. Torchin
Marc L. Caroff
Stephen J. Emery
FN1. At the final hearing held on September 15, 1987, we indicated that this interference would be formally redeclared concurrent with our final decision, in accordance with the decision on motions (Paper No. 35) of October 31, 1985, by substituting Count 2 for Count 1 with Vanderkooi claim 39 designated as corresponding to the new count in addition to Vanderkooi claims 1-38 and 40-47 and Hoeschele claims 1-8. Neither party objected at final hearing to having the interference redeclared as indicated above. In fact, we note that both parties have astutely based their briefed positions on the new count, Count 2 (Vanderkooi Brief--page 30; Hoeschele brief--page 3).
FN2. The Hoeschele testimony and exhibits will be respectively referred to by the designations HR- and HX-, with each designation being followed by the corresponding page and line or exhibit number in the Hoeschele record. The Vanderkooi testimony and exhibits will similarly be referred to by the designations VR- and VX-.
FN3. There is no dispute here that the invention defined by the count was conceived by the junior party as early as April 16, 1980 and subsequently reduced to practice in June or July of the same year. In this regard, it is noted that the senior party has not contested Vanderkooi's case-in-chief on priority (Hoeschele's position on this matter is summarized on page 55 of his brief).
FN4. Vanderkooi does not dispute that the evidence adduced by Hoeschele is sufficient to establish that the invention in issue was actually reduced to practice by DuPont personnel, other than Dr. Hoeschele, prior to the date of invention established by Vanderkooi. In this connection, see the first paragraph on page 30 of the Vanderkooi brief.
FN5. The relevance of the Gunter case is adequately discussed in the Hoeschele brief (pages 36-37) and never disputed by the junior party, either in its reply brief or at final hearing.
FN6. The Polye case is relied upon by the junior party to support its position that the reduction to practice at DuPont does not inure to the benefit of Hoeschele.
FN7. We wish to emphasize that it is Vanderkooi who challenges inventorship; and that Hoeschele does not, as Vanderkooi seems to suggest, seek to change inventorship.
FN8. 197 USPQ 482, 483-484.
Vanderkooi et al
Patrick L. Henry of Morristown, NJ
Richard A. Negin
Richard A. Anderson of Petersburg, VA
Norman H. Stepno of Alexandria, VA
Ronald L. Grudziecki
Gary A. Samuels of Wilmington, DE
Francis A. Paintin
Hoge T. Sutherland of Arlington, VA
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