text:
    Reid SMITH, Appellant, v. Rogers C. B. MORTON, Secretary of the Interior of the United States of America, Appellee.
    No. 72-1799.
    United States Court of Appeals, Ninth Circuit.
    Feb. 1, 1974.
    William W. Stevenson, Stevenson, Warden & Smith, Flagstaff, Ariz., Gray, Horton & Hill, Reno, Nev., for appellant.

      William C. Smitherman, U. S. Atty., Phoenix, Ariz., John D. Helm, Kent Frizzell, Asst. Attys. Gen., Carl Strass and Dennis M. O’Connell, Attys. & Lands Div., U. S. Dept, of Justice, Washington, D. C., for appellee.
    Before WRIGHT, KILKENNY and WALLACE, Circuit Judges.
   ORDER

The decision of the district court is affirmed for the reasons stated in United States v. Reid Smith, sub nom., United States v. Denison, 71 I.D. 144 (1964). See also Barrows v. Hickel 447 F.2d 80, 83 (C.A.9 1971).

The consolidation of appellant’s hearing with others did not affect his substantial rights.


source: Caselaw Access Project

author: MILLER, Judge. RICH, Judge

license: Public Domain

text:
    Frank L. YOUNG, Appellant, v. Howard S. DWORKIN, Appellee.
    Patent Appeal No. 9004.
    United States Court of Customs and Patent Appeals.
    Jan. 17, 1974.
    Rehearing Denied Feb. 14, 1974.
    Paul Maleson, Maleson, Kimmelman & Ratner, Philadelphia, Pa., attorney of record, for appellant.
    Howard S. Dworkin, pro se.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This is an appeal from the Board of Patent Interferences which awarded priority to the senior party-appellee on the grounds that the junior party-appellant had suppressed or concealed the invention. 35 U.S.C. § 102(g). We affirm.

FACTS

The invention is an expansible envelope formed from single blanks of folda-ble material. The envelope is open at the top and has a gusset (an inward bellow-type fold forming a triangular insert) on each of the two sides plus one at the bottom, thereby permitting expansion into a box-like configuration.

' It appears that sometime prior to November 4, 1965, appellant conceived the invention which, according to his testimony, would be adaptable to machine folding and gluing of the bottom gusset. Existing three-gusseted envelopes, which were of a different construction from the invention, were only partially manufactured, by machine, the bottom gusset requiring a hand folding and gluing operation. Thus, appellant’s objective was to design a three-gusseted envelope which could be entirely machine-manufactured. Upon receipt by his company of an order for 15,000 three-gusseted filing envelopes from the School District of Philadelphia on November 4, 1965, appellant constructed a model of the envelope. This was introduced into evidence and found by the board to be a completed article, capable of actual use, and further found to have constituted a reduction to practice.

In November, 1965, appellant showed the model to the company vice-president for production and to the plant superintendent, who made a drawing and had a die prepared for the new design. Using the die, paper blanks for the entire order were prepared, and about the last week of November, 1965, were run through one of the company machines. However, the glue did not register in the right positions, the paper blanks were scrapped, new blanks were re-die-cut for hand-fold manufacture, and the order was completed by hand. Nothing further was done with the invention until after August 26, 1966, when an order for 6,000 envelopes was received from the Social District of Philadelphia. Appellant decided to make this run with the new design on another company machine, with new gears and new belts designed to overcome the glue problem encountered in the first run nine months earlier. However, the glue problem was not overcome, and this run (made in September, 1966) was unsuccessful. The paper blanks were thrown away, and again the order was completed by hand, using new blanks for hand-fold manufacture.

No further attempt was made by appellant to produce the invention on the company’s existing machines. However, some eight months later appellant attended an international paper-converting machinery show in Dusseldorf, Germany, for the purpose, as he testified, of looking for a standard folding and gluing machine which would answer the glue problem. Appellant testified that he felt all of the machines that he saw there would handle the problem, but, upon his return, he directed his vice-president for production to get in touch with the International Paper Box Machine Company in New Hampshire, because it was the only company from the United States at the show and would probably provide better service. In the first week of August, 1967, the vice-president visited the International plant in New Hampshire. He made subsequent trips to the plant and ordered a machine on September 13, 1967. The machine was delivered late in December, 1967, assembled, and put into operation in January, 1968. Appellant testified that approximately 25,000 envelopes of the invention design were successfully run off during January.

Meanwhile, on October 31, 1967, some five months after attending the show in Dusseldorf, appellant wrote to his patent lawyer, enclosing samples “to show the style and construction of the expanding envelopes which can be manufactured on the new machine” and saying, “I think we should apply for a patent very soon.” However, no showing was made of when the lawyer was directed to proceed in drawing up the application. It was not until February 7, 1968, following the successful runs on the new machine the month before, that appellant filed his application for a patent.

Under cross-examination appellant testified that he had been in touch with his patent lawyer prior to writing the letter of October 31, 1967, and that “I told him I had invented a new design and that we had experimented with it; we knew that it was a practical design but we were unable to manufacture it with our present equipment.” (Emphasis sup-. plied.)

When asked on cross-examination whether it was his usual practice to delay a period of two years after conception before taking up an invention with his patent solicitor, appellant responded: “I do not apply for a patent until I am positive that we can manufacture the item.”

When asked on cross-examination whether it was correct that his reason for not seeking out the services of his patent solicitor in 1965 was his “doubts” that the envelope could be manufactured at that time, appellant testified: “I had no doubts that it could be manufactured. My doubts were that we could not manufacture it with our present equipment, and the patent itself would be of no value to us unless we could manufacture it.”

Under cross-examination appellant testified, “Oh, yes,” in response to the question: “During the time from November, 1965, to May, 1967, was there a continuous demand for gusseted envelopes?” He also said, “That is correct,” in response to the question: “. . .1 understand that it is much cheaper to make these envelopes by machine than it is by hand; is that correct?”

The board noted that the record shows all of appellee’s activity to have occurred between January 31, 1967, and the date of filing his application for a patent on December 28, 1967, with reduction to practice no later than October 6, 1967, at which time an envelope constructed according to the terms of the count was delivered and explained to his patent lawyer.

There is no evidence in the record to indicate that either party knew of the other party’s activities regarding the present invention until the Declaration of Interference by the Patent Interference Examiner dated June 9, 1969. There is no evidence that appellant disclosed his invention to anyone outside his company, except for a representative of the International Paper Box Machine Company, until it was made known to his patent lawyer in October of 1967.

OPINION

The record before us supports the board’s finding that appellant’s invention was reduced to practice and, further, that this occurred in November, 1965.

The sole remaining question is whether the board correctly held that junior party-appellant suppressed or concealed his invention within the meaning of 35 U.S.C. § 102(g). Here, senior party-appellee bears the burden of proof by a preponderance of the evidence, notwithstanding junior party-appellant’s burden on the issue of priority of invention which he has sustained. Gallagher v. Smith, 206 F.2d 939, 41 CCPA 734 (1953).

In considering the question, we point out that section 102(g) is concerned with the subject of priority of invention and, for interference purposes, provides that a person shall be entitled to a patent unless “before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it.” By its enactment as part of the Patent Act of 1952, Congress codified the body of law which had accumulated on the subject of priority of invention, including the legal concept of “suppression or concealment.”

We note that commencing with the first edition of Webster’s dictionary in 1828 and continuing to the present the definition of “suppress” has included the idea of keeping from public knowledge. It is to be expected, of course, that the courts would be aware of the definition, which fits very well with their statements on the clear policy against suppression underlying our interference laws, both prior to and including 35 U. S.C. § 102(g). Long ago this policy was explained by the U.S. Supreme Court in Kendall v. Winsor, 62 U.S. (21 How.) 322, 328, 16 L.Ed. 165 (1858) as follows:

The true policy and ends of the patent laws enacted under this Government are disclosed in that article of the Constitution, the source of all these laws, viz: “to promote the progress of science and the useful arts,” contemplating and necessarily implying their extension, and increasing adaptation to the uses of society. ... By correct induction from these truths, it follows, that the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and, if aided in his design, would impede, the progress of science and the useful arts.

Mason v. Hepburn, 13 App.D.C. 86, 1898 C.D. 510 (1898) has generally been regarded as the origin of the suppression and concealment doctrine. There the court (13 App.D.C. at 96), after quoting from Kendall v. Winsor, emphasized the “policy and spirit of the patent laws” underlying the doctrine as follows:

The true ground of the doctrine, we apprehend, lies in the policy and spirit of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting, in perfect good faith, that which he and all others have been led to believe has never been discovered, by reason of the indifference, supineness, or wilful act of one who may, in fact, have discovered it long before.

In Thomson v. Weston, 19 App.D.C. 373, 1902 C.D. 521 (1902), the court reaffirmed its Mason v. Hepburn doctrine —again in reference to “the true policy and ends of the patent laws”:

[B]y deliberate concealment or suppression of the knowledge of his [the inventor’s] invention he subordinates his claim, in accordance with the general policy of the law in the promotion of the public interest, to that of another and bona fide inventor who during the period of inaction and concealment shall have given the benefit of the discovery to the public. Viewed in the light of “the true policy and ends of the patent laws,” the latter is the first to invent, and therefore entitled to the reward.

This court has clearly followed the Mason v. Hepburn doctrine. Brokaw v. Vogel, 429 F.2d 476, 57 CCPA 1296 (1970); Woofter v. Carlson, 367 F.2d 436, 54 CCPA 917 (1966). It has, to be sure, cautioned that the doctrine is to be applied only where the record sustains the burden of proving suppression or concealment. Frey v. Wagner, 87 F.2d 212, 24 CCPA 823 (1937); Woofter v. Carlson, supra. At the same time, the court has declared that application of the Mason v. Hepburn doctrine is not to be confined to “extreme cases” and that it—

. is a very healthy rule to be invoked in the public interest whenever the fact situation warrants it. While the law may abhor a forfeiture, the Mason v. Hepburn principle is not a forfeiture in the true sense; rather, it is a rule according to which the patent right goes to the most deserving.

Brokaw v. Vogel, supra. Needless to say, evidence of one party’s being “first to file” would hardly satisfy his burden of proving suppression by the other party.

As we have done before, we emphasize here that each case involving the issue of suppression or concealment must be considered on its own particular set of facts. Myers v. Feigelman, 455 F.2d 596, 59 CCPA 834 (1972); Engel-hardt v. Judd, 369 F.2d 408, 54 CCPA 865 (1966). In such consideration, two guideposts have been firmly established:

First, the length of time from reduction to practice to filing of an application for a patent is not determinative. Woofter v. Carlson, supra; Schnick v. Fenn, 277 F.2d 935, 47 CCPA 1174 (1960). Mere delay, without more, is not sufficient to establish suppression or concealment. Gallagher v. Smith, supra. However, the warning has been sounded that one who delays filing his application does so at the peril of a finding of suppression or concealment due to the circumstances surrounding the delay. Woofter v. Carlson, supra. See also Watson, Commissioner of Patents v. Allen, 103 U.S.App.D.C. 5, 254 F.2d 342 (1958); International Glass Co., Inc. v. United States, 408 F.2d 395, 187 Ct.Cl. 376 (1968).

Second, spurring into filing an application for a patent by knowledge of another’s entry into the field (e. g. by issuance of a patent) is not essential to a finding of suppression or concealment. Dewey v. Lawton, 347 F.2d 629, 52 CCPA 1573 (1965); Brokaw v. Vogel, supra; Gallagher v. Smith, supra.

Bearing these points in mind, we now turn to the question of appellant’s intent to suppress. This, if established by the evidence of record, coupled with the delay in filing his application for patent, would support the board’s finding of “suppression” for purposes of 35 U.S.C. § 102(g). The facts show a delay from reduction to practice in November of 1965 until February 7, 1968, when appellant’s application for a patent was filed. During this period there was a “continuous demand” for gusseted envelopes which, if machine-produced, would cost less.

The delay was not for the purpose of perfecting appellant’s invention — a critical point of distinction from other cases holding that delay was justifiable and, therefore, suppression or concealment had not been proved. Frey v. Wagner, supra (“The law does not punish an inventor for attempting to perfect his process before he gives it to the public. . reasonable experimentation is frequently encouraged.”); Altorfer v. Haag, 74 F.2d 129, 22 CCPA 806 (1934) (following reduction to practice, frequent and comparative tests of machines equipped with the invention with a view to determining best materials for manufacture of invention and refinements that should be made); Dewey v. Lawton, supra (testing and refinement of invention for more than a year after reduction to practice); Schnick v. Fenn, supra (“mitigating circumstances” included continuing development, after reduction to practice, of best design and tests in further perfecting the invention) ; Watson, Commissioner of Patents v. Allen, supra.

Instead, the evidence discloses that the delay here resulted from appellant’s intent to wait, without disclosing his invention — not to perfect the invention, but: first, to determine whether the invention could be produced with his company’s own equipment; then, when that could not be done (after two attempts nine months apart), some eight months later to locate a machine which would enable his company to manufacture it; and, finally, some eight months after that, to have a successful run on the new machine. Appellant argues that a “generalized search” went on for a machine to produce his envelope. However, this is based on mere hearsay testimony of the supervisor of appellant’s plant, as follows:

Q. What was being done in the office then?

A. They were trying to find better equipment.

Q. Were any of their efforts brought to your attention?

A. No.

Q. How did you know they were trying to find better equipment?

A. Because they did. When I say they were not brought to my attention nobody said “We are going out to look at this and this machine,” but there was discussion about trying to find a machine but the actual discoveries or failures were not discussed with me.

Aside from appellant’s trip to the Dusseldorf show over a year and a half after reduction to practice and the follow-on visits to the International plant in New Hampshire by the company’s vice-president, the record is devoid of any meaningful evidence to support appellant’s “generalized search” argument. Rather, it supports a finding of total inactivity. For example, appellant has made no showing that an equipment catalog was consulted or that even one telephone call or letter of inquiry was made to a machine manufacturer prior to his trip to Dusseldorf where, interestingly, he located a machine produced by a U.S. manufacturer. Considering the two unsuccessful runs on the machines of appellant’s company, we believe some such evidence should have been forthcoming to establish ordinary- business prudence on the part of appellant in locating a suitable machine during the over a year and a half period following reduction to practice.

In his own words, appellant’s excuse for the delay in filing his application was simply: “I do not apply for a patent until I am positive we can manufacture it.” And, indeed, appellant delayed filing his application until after the successful fun, when he was positive that the invention could be produced on his company’s new machine. Unlike Schnick v. Fenn, supra, where early in the delay period the inventor had his patent attorney make a preliminary search for which his company was billed, appellant delayed some twenty months after reduction to practice before furnishing his patent lawyer samples of his invention. This was five months after the Dusseldorf show where, appellant testified, he thought all the machines he saw would satisfy his problem. Even then, appellant merely told his patent lawyer that he thought “we should apply for a patent very soon.” And it was not until over three months later, after the successful runs on the new machine, that appellant filed his application.

Meanwhile, as found by the board, ap-pellee, without knowledge of appellant’s activities, conceived and reduced his invention to practice between January 31, 1967, and October 6, 1967, at which time he delivered and explained to his patent lawyer an envelope constructed according to the count. Less than three months later, he filed his patent application. Also, the record shows that in early March, 1967, appellee sent samples of blanks for envelopes to the International plant in New Hampshire to be run on an experimental machine (which was built for exhibition at the Dusseldorf show later in the year). Appellee made a downpayment for one of the machines by check dated May 1, 1967, and the machine was delivered in late July or early August, 1967. We believe the nature and tempo of appellee’s activities were in accord with ordinary business prudence.

In view of the foregoing and considering the record as a whole, we hold that junior party-appellant suppressed his invention within the meaning of 35 U.S.C. § 102(g).

The decision of the board is affirmed.

Affirmed.

RICH, Judge

(concurring).

The United States patent system is a first-to-invent system, wherefore we have interferences to determine, in eases of conflict, who the first inventor is. But for at least a century it has been a qualified first-to-invent system. The de facto first inventor has not necessarily been adjudged to be the de jure first inventor. In Mason v. Hepburn, 13 App. D.C. 86 (D.C.Cir.1898), the court expressed its conclusion that the actual first inventor should not get the patent in two different ways. Its first statement was that “Hepburn must be held to be the first inventor in the sense of the law regulating the grant of patents.” (Mason was actually the first inventor.) Its second statement was that Hepburn must “be regarded as the real inventor and as such entitled to his reward.” Hepburn, it should be remembered, although the second inventor, already had his patent and the question before the court was whether Mason should get one on the same invention because he was in fact the first inventor.

Though we are accustomed to talking about the Mason v. Hepburn doctrine, the court deciding that case in 1898 did not pull its holding out of its hat; it made it on the basis of consistent decisions going back at least to 1872, cited in its opinion, and some of the reasoning appearing in the opinions. Several of these were by Commissioners of Patents or Acting Commissioners and went off on various theories of law including forfeiture, abandonment, abandoned experiment, and estoppel based on laches. But whatever the theory on which the decision was based, the actual first inventor lost out to a second inventor who was being diligent in applying for a patent and making the invention available to the public while the first inventor was being dilatory in those matters.

In view of the fact that the time interval in this case — about 27 months— seems short by comparison with Mason’s 7-year delay, I call attention to a few early cases cited in Mason v. Hepburn, the earliest being Monee v. Adams, 1 O. G. 1, 1872 C.D. 1, opinion by Duncan, a perspicacious Acting Commissioner. One of the headnote headings of that opinion is “Forfeiture by laches.” The invention in that ease was a combination tool consisting of a handle with a putty knife at one end and a glass cutter at the other. The Commissioner found it to be of doubtful patentability but went ahead and decided the interference anyway. Both parties proved actual reduction to practice, Monee before Adams by about 10 months. The question posed was whether, nevertheless, Adams was “to be regarded as the prior inventor.” He was so regarded. The determining factor was the behavior of Monee during a period of 18 months from his actual reduction to practice to his filing date. The evidence showed that Monee never abandoned his invention and always intended to patent it. He had, in fact, consulted his patent attorney about how long it would be safe to wait and was told it had better not be more than two years, by analogy to the then two-year grace period following a public use. (R.S. 4886.) Monee also testified that he delayed taking any steps to make the invention public because he was manufacturing another glass cutter and wanted to fill the market “before introducing a new article.” He was spurred into filing by being approached by Adams who wanted Monee to purchase his invention. Monce’s 18-month delay for these reasons, during which time Adams proceeded diligently to reduce to practice and file, was fatal to his right to a patent. The opinion states:

This, under the well-settled practice of the Office, must be regarded as working a forfeiture of his rights, unless, as he contends, he had an indefeasible right to delay two years after perfecting his invention before making an application upon it. [Emphasis mine.]

It was held there was no such indefeasible right. The underlying policy was stated thus:

It is true, as often announced, that mere delay, no matter how long continued, cannot impair an inventor’s right to a patent. It is only when, by reason of such delay, another party gains the opportunity to give the invention to the world, and actually becomes the first to do this, that the first inventor’s rights pass away.
It is also true that the law looks with indulgence upon delays which arise from the circumstances of the party. Hence the requirement of reasonable diligence only; but in the present case there was no controlling necessity that compelled delay. It was an intelligent, deliberate act on the part of Monee, and done, not for the purpose of improving the invention before entering upon the manufacture of it, so that the public might eventually reap the greater benefit but for the less praiseworthy object of filling the market with inferior goods * * *.

Thus at that early date, and probably earlier too, the law permitted an inventor a reasonable time within which to perfect his invention but not to sit around doing nothing with it. Another policy statement in the opinion is that the object of the patent law “is to reward that man from whom the public actually derives the benefit received, unless, in fact, another, prior in making the invention, is proceeding to give it to the world with no further delay than what is imposed by circumstances beyond his control.” Thus we see as already established in the Patent Office more than a century ago the policies underlying what we know as “the Mason v. Hepburn doctrine.” Even in those early days the controlling factor was not time but conduct.

We also see in these early interferences that the concept of “diligence” was viewed as applying to two different periods: diligence in reducing the invention to practice and diligence in filing a patent application after a reduction to practice. It clearly appears to have been the rule that absence of the latter while a rival inventor industriously brought the invention to public attention through manufacture, or by proceeding with the filing of an application for patent, resulted in loss of the right to a patent by the first inventor unless he could show some good excuse for his inaction. In Mallett v. Cogger, 1879 C. D. 100 (Com’r.Pats.) we find the interesting concept that the second inventor “rescues the invention from oblivion and confers its benefits upon the public.”

In Farmer v. Brush, 1880 C.D. 5 (Com’r.Pats.), Farmer appears to have been the first inventor to have completed the invention but since he did nothing with it for a bit more than two years thereafter, Brush, who already had a patent, received an award of priority “pro forma.” The case went off on an abandonment theory.

In Sheridan v. Latus, 1883 C.D. 76 (Com’r.Pats.), the real parties left over from a three-party interference were Latus and one Clarke who was the actual first inventor. He lost out, however, through having given “no thought” to the invention from early 1879 to the summer of 1881, after what clearly appears to have been an actual reduction to practice. Commissioner Marble nevertheless ruled against him on an erroneous application of the “abandoned experiment” doctrine, holding Latus entitled to the patent “not because he was the first inventor, but because at the time he made his invention there was no one, so far as is shown, who had the right to make claim thereto, and that he used due diligence in prosecuting his claim therefor.”

It will be noted that Mason v. Hepburn cites the 1890 text Robinson on Patents, § 390 (C.D. p. 516). In this section, which is entitled “Negligence in Applying for a Patent Does not Affect the Rights of an Inventor except by Es-toppel,” Robinson reviews the above and other cases, concluding that an inventor who has completed his invention is required “to proceed with reasonable diligence to disclose it by applying for a patent, if he desires to claim it as against a subsequent inventor” (p. 553, emphasis mine). Noting a conflict in the cases — some courts having refused to rule against a first inventor notwithstanding his laches on any ground short of actual abandonment of the invention to the public — Robinson favored applying an estoppel against a dilatory first inventor. He says (pp. 558-559):

The former rule may on equitable grounds be regarded as the more correct, since an inventor who, having perfected his invention, voluntarily conceals it and unreasonably delays his application for a patent, thereby wilfully misleads subsequent and innocent inventors into the belief that the field covered by the invention is still open, and he therefore ought to be estopped from patenting the invention and appropriating its exclusive enjoyment to himself after their honest efforts in the same direction have succeeded.

I have set forth briefly some of the antecedents of Mason v. Hepburn because I think courts and the bar have recently too much concentrated on the precise facts of that case without appreciating the basic principles underlying the decision, which was far from unique in the annals of patent law in 1898, several years after Robinson expounded those principles. We should now try to understand those principles and not attempt to derive them from Mason v. Hepburn alone, which was but one episode in the development of the law.

In delving into these old cases it becomes apparent that it is not the time elapsed that is the controlling factor but the total conduct of the first inventor. While only 27 months is involved in the case at bar it is clear that in the nineteenth century the Patent Office thought nothing of depriving the first inventor of his right to a patent as against a more diligent second inventor when the period involved from reduction to practice to filing was two years or less. It all depended on what the first inventor was doing during the period of delay. It is clear that it was regarded as a question of “diligence.” Robinson in § 390 treats of both diligence in reducing to practice and diligence in filing. Clearly use of the term should not be. restricted to the former period. In either case, the existence of diligence depends on what the inventor is doing and the circumstances under which he acts. It may also be a relative matter, taking into account what the later inventor is doing too. Review of our recent opinions on this issue will show that we have tried to take the whole picture into account. As we said in Brokaw v. Vogel, 429 F.2d 476, 57 CCPA 1296 (1970), “What is involved is a policy question as to which of two rival inventors has the greater right to a patent.” And again, “it is a rule according to which the patent right goes to the most deserving.”

Section 102(g) under which we have been deciding these cases since 1953 is, without question, a broadly stated codification of previously existing law. It is in part based on a prior statute. The Revisers Note to § 102(g) states that it is derived from R.S. 4920, the second defense, which statute read:

In any action for infringement the defendant may plead the general issue, and, having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters:
* -X- * * * -X-
Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same.

The Revisers Note also says of § 102(g), “This paragraph retains the present rules of law governing the determination of priority of invention.” We thus have in the present statute, as we had in its predecessor, the concept of “reasonable diligence” in priority contests and we also have, from the body of ease law, the rule that a contestant loses, even if he is the first inventor, if he had abandoned, suppressed, or concealed his invention. The meaning of these terms is not to be derived only from dictionaries, even if published before 1952, but from the cases involving priority disputes showing what fact situations were judicially deemed to amount to abandonment, suppression, or concealment. I have touched on some of them but there are many more. If Congress understood anything about § 102(g), it was that it was codifying case law, as the Revisers Note told it, not that it was making law according to Webster’s Dictionary.

Taking into consideration the facts of the present case as set forth in the opinion of Judge Miller and the principles which underlie the many decisions which have awarded “priority” to the second inventor in interferences, I conclude that priority in this case was properly awarded by the board to Dworkin and I therefore agree to an affirmance.

In general, I agree with the reasoning of the majority opinion and I believe it intends to apply the law as I see it; but I wish to emphasize that what controls here is § 102(g) and not the Mason v. Hepburn case alone or its limited “doctrine.” For that reason, I particularly agree with the majority that “spurring” into activity by an opponent is not essential to a finding of suppression or concealment.

I cannot agree with the board that the question in this case is whether Young “forfeited his right to a patent." (My emphasis.) But for Dworkin’s conflicting claim, Young forfeited nothing and would get a patent. All he forfeited, as I tried to point in Brokaw v. Vogel, supra, last paragraph of the opinion, was the right to rely on his prior actual reduction to practice in a priority dispute. Considering what Robinson said, quoted above, another, and perhaps better, way to have stated it would have been that Young was estopped by his conduct to rely on his reduction to practice in a priority dispute.

In view of § 102(g), however, it is now enough to find that Young either suppressed or concealed. If he did either, he loses the interference and, by custom, “priority” — the magic word by which all interferences are terminated (even where there is only one inventor and the issue is derivation) — is awarded against him. (Cf. 35 U.S.C. § 135.) Therefore, there is no need to become involved with forfeiture or estoppel or any other legal theory. To this extent the codification of the case law in § 102(g) has simplified matters. There is no longer a need to look to Mason v. Hepburn and its “doctrine” as the source of the law. It is but one of the many decisions codified in the statute, which, as stated above, “retains the present [1952] rules of law governing the determination of priority of invention.” The board decided this case under § 102(g) and we are doing likewise. The issue is, therefore, not forfeiture or estoppel or anything other than whether Young suppressed or concealed, since no question of abandonment has been raised. The only reason we have to look to prior cases is to gain an understanding of the meaning of “suppressed” and “concealed,” which concepts have been codified in § 102(g). Case law “doctrines” are no more; the question is now simply one of statutory construction.

I may say that this approach to the law is one which has just occurred to mé in the study of this case and I present it in the hope of making the law simpler and clearer in the future by the exclusion from opinions of unnecessary legal theories like forfeiture.

      . Interference No. 96,865 between Young on his application No. 703,663, filed February 7, 1968, and Dworkin on his application No. 694,141, filed December 28, 1967.

      . An American Dictionary of the English Language, S. Converse, New York, 1828.

      . Thus, when the delay period is determined to be “unreasonable,” there is a basis for inferring an intent to suppress. Brokaw v. Vogel, supra. The activities of an inventor during the delay period (e.g. steps to improve or perfect the invention after it has been reduced to practice) may well excuse the delay and, thereby, support a finding that it was “reasonable.” Frey v. Wagner, supra.

      . There seems to be no good reason why the doctrine of estoppel should not be applied in its fullest extent to an inventor who, having completed his invention, voluntarily delays his application for a patent. In the present condition of industrial enterprise he may be fairly chargeable with knowledge that other persons skilled in the art to which his invention appertains have perceived the same want, that they are striving to discover means by which this want may be removed, and that their inventive efforts are very likely to result in the same art or instrument which he had already produced. If under these circumstances he wilfully keeps silent concerning his prior discovery and permits these later inventors to expend their money, time, and energy in endeavors which would be at once abandoned were he to disclose the character of his own invention, he is certainly not entitled, on any principle of justice and fair dealing, to urge against them his superior right after they have completed their inventive acts and diligently attempted to secure the benefit of the invention to themselves and to the public by applying for a patent.
      This doctrine would probably have long ago met with universal acceptation had it not been unnecessarily confounded with abandonment of the invention to the public * * *.

       § 102. Conditions for patentability; novelty and loss of right to patent

      A person shall be entitled to a patent unless—
      :¡; :¡: * :(<
      (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or coiieealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who .was first to conceive and last to reduce to practice, from a time prior to conception by the other.


author: MILLER, Judge.

text:
    John H. GOLOTA, Appellant, v. Albert P. STROM and Charles F. Cromer, Appellees.
    Patent Appeal No. 9055.
    United States Court of Customs and Patent Appeals.
    Jan. 17, 1974.
    Samuel H. Weiner, New York City, for appellant; Bernard Gerb, Ostrolenk, Faber, Gerb & Soffen, New York City, of counsel.
    William A. Elchik, for appellees; Clement L. McHale, of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This appeal is from a decision of-the Board of Patent Interferences awarding priority to Albert P. Strom and Charles F. Cromer, senior party-appellees, in Interference No. 97,491, involving Strom et al. patent No. 3,497,653, for “Fluid-Blast Circuit Interrupters With Extensible Movable Fluid-Directing Nozzle.” The patent was issued February 24, 1970, on application Serial No. 598,761, filed December 2, 1966. The Golota application, Serial No. 680,778, was filed November 6, 1967, for “Adjustable Contact Nozzle And Retractable Arcing Chamber For Gas Blast Circuit Breakers.” We affirm.

THE INVENTION OF THE COUNTS

The counts are directed to. a fluid-blast circuit interrupter, including a means defining a source of fluid under pressure, which appellant illustrates in his application Dy the following drawing:

With reference to the above figure, limitations of count 1 are set forth in the following comparison:

Count 1

A fluid-blast circuit interrupter including means defining an orifice-shaped stationary contact

having an exhaust opening therethrough

and a cooperable movable contact separable therefrom to establish an arc,

an actuating member to effect opening and closing movement of the movable contact,

means defining a source of fluid under pressure,

blast-valve means for controlling a flow of high-pressure fluid from said source,

a movable insulating nozzle for directing fluid through said exhaust opening

picked up by said actuating member on the closing stroke of said actuating member and abutting said orifice-shaped stationary contact,

means biasing said movable insulating nozzle away from said stationary contact,

said movable insulating nozzle being in its extended position in the closed-circuit position of the interrupter,

conduit means from said blast-valve means leading into a volume defined at least partially by said insulating nozzle,

whereby the gas pressure in said volume will retain said nozzle in its extended position during arc interruption.

(Emphasis supplied.)

Golota Application

Contact 53.

Central opening 55.

Movable contact assembly which includes contact finger 60.

Operating shaft 86.

Tank 13.

Cylindrical valve body 158.

Sliding interrupter tube 123.

Contact finger 60 picked up ring 127 of nozzle 123 to abut 54.

Position as shown in Figure 2.

Lower casing 112.

Counts 2 and 3 present variations not pertinent to the issues before the court.

PROCEEDINGS BELOW

Appellant copied three claims, representing the three counts on appeal, from appellees’ patent and filed an affidavit by Weiner, counsel for appellant, with attached documents under Rule 204(c). Subsequently, the interference was declared. At the same time, an Order to Show Cause under Rule 228 was issued by the interference examiner, who ruled that the showing made by appellant under Rule 204(c) was inadequate to pri-ma facie entitle him to an award of priority. Appellant responded with two additional affidavits under Rule 228 — a second affidavit by Weiner and one by McConnell.

The first Weiner affidavit, accompanied by a developmental drawing similar to Figure 2 above and a patent invention disclosure document briefly describing the invention shown in the drawing, recites that the inventor and corroborating witness, McKeough, had left the employ of the assignee of the Golota application and that:

(b) There was in my files a copy of Drawing 87124SKL-079, Revision 3, dated 1-12-66 (January 12, 1966) and I used a copy of this drawing in the preparation of the above-noted application. This drawing was obtained by me from the assignee of the above-noted application. On information and belief, this drawing was made under the instructions and direction of the inventor, John H. Golota, and the drawing was completed January 12, 1966.

The second Weiner affidavit, with attached portions of appellant's assignee’s Patent Committee Agenda showing the docketing of appellant’s invention disclosure document, states:

(a) On information and belief, a prototype unit, made pursuant to Drawing 87124SKD-079, Revision 3, dated 1-12-66 and attached to my earlier affidavit, was manufactured and successfully tested on or before December 2, 1966, or at least continuous work was carried out toward the production of such a unit until there was a successful reduction to practice.

The affidavit further states that the developmental drawing was given to Weiner by appellant on June 9,1966.

The McConnell affidavit reads:

I was personally familiar with the development of the SF6 breaker at the Power Circuit Breaker Division of I-T-E Imperial which is of the type shown in the application of party Gol-ota and as shown in Drawing 87124SKL-079, Revision 3. I personally observed the manufacture, assembly and successful tests and demonstrations of an interrupter prior to December 2, 1966, which was built according to this drawing.

In holding that appellant’s showing under Rules 204(c) and ’228 was inadequate, the board found that appellant had “not set forth any facts relative to a reduction to practice which would prima facie entitle him to an award of priority . .” It noted that the first Wei-ner affidavit did not mention reduction to practice, while the second (“on information and belief”), filed under Rule 228, merely gave conclusions thereon and did not comply with Rule 204(c), which requires the expected testimony of a witness rather than knowledge of counsel; that the McConnell affidavit did not allege facts and was unclear over what he meant by “interrupter.”

In reaffirming its findings on reconsideration, the board added that the affidavits do not disclose the claimed “means defining a source of fluid under pressure.”

OPINION

The question before the court is whether the board erred in holding that appellant’s affidavits were inadequate for purposes of Rules 204(c) and 228.

Appellant argues that the affidavits show the clear elements of a justiciable case by way of a reduction to practice prior to the effective date of appellees. A similar argument was advanced in Kistler v. Weber, 412 F.2d 280, 56 C.C. P.A. 1413 (1969), where this court explained Rule 204(c) as follows:

The former [old Rule 114] only called upon the junior party in the pleading, called a Preliminary Statement, to allege facts which, if subsequently proved, would overcome the prima fa-cie case made by the date of the senior party’s application, whereas the latter [Rule 204(c)] calls upon the junior party to prove (by way of affidavit (s) setting forth facts) at least so much of his case as would entitle him to an award of priority if the senior party were to rely only on his filing date and were not to rebut any of the junior party’s case. Under old Rule 114, it was to be assumed that the junior party could prove what he alleged in his Preliminary Statement; he was not required to prove anything. Under Rule 204(c), however, prima facie proof of facts is called for, albeit in affidavit form.
We also disagree with Kistler’s sug- ■ gestión that Rules 204(c) and 228 place any undue burden on a junior party or are inherently in any way “contrary to the statutory rights of a first inventor.” The expense involved in a protracted interference, and the special hardships workable on a paten-tee involved therein, are notorious, and to minimize both, where possible, would appear to be the laudable purpose of these rules. If a junior party is in fact “a first inventor” and if he could prove that in a “full hearing on priority,” we see no reason why he should be prejudiced or unduly burdened by a requirement that he prove (prior to a “full hearing”) by way of affidavits and documentary evidence that he is at least prima facie entitled to an award of priority over the pat-entee’s effective filing date. [Footnote omitted.]

In response to Kistler’s argument that “he does not have to prove his facts at this stage of the interference but only give rise to an inference or show a possibility that he could prove them later,” the court said:

We cannot accept this procedural theory. To do so would entirely vitiate the purposes of Rules 204(c) and 228 and allow mere uncorroborated assertions to take the place of proof of acts and circumstances adequate to overcome Weber’s March 9, 1960, filing date.

Rules 204(c) and 228 were again reviewed in Schwab v. Pittman, 451 F.2d 637, 59 C.C.P.A. 720 (1971), where we said that the requirement to prove a pri-ma facie case is proper in order to justify putting a patentee to the expense and inconvenience of prosecuting an interference.

The board’s holding that appellant’s affidavits were inadequate because Rules 204(c) and 228 require an allegation of facts, rather than mere conclusions, finds support not only in the above cases, but in Patent Office practice as well. And we agree that appellant’s affidavits contain mere conclusions rather than the showing of facts required. No facts are set forth on how the claimed device was actually reduced to practice, how it was embodied in its final constructed form, or how it was tested. The second Weiner affidavit and the McConnell affidavit set forth merely the conclusion or opinion that a structure embodying all the limitations of the count was reduced to practice.

A prima facie case assuredly would have to be made for all limitations in the counts. Count 1 requires “means defining a source of fluid under pressure,” which appellant has indicated generally refers to tank 13 in the above figure. (Appellant’s specification notes that interrupter 10 rests on tank housing 13.) Thus, when the McConnell affidavit refers to “interrupter,” it is unclear, as the board pointed out, whether McConnell was- referring only to interrupter 10 or to a structure embodying all the limitations of the count, including tank 13. Therefore, the board correctly concluded that there are no facts concerning conception or reduction to practice of the “means defining a source of fluid under pressure,”

We also note that appellant has failed to provide “an explanation of the basis on which he believes that the facts set forth” in the affidavits overcome the effective filing date of appellees.

Appellant raises the question of whether an affidavit submitted “on information and belief” in behalf of a witness expected to testify (sufficient cause being shown for inability to furnish an affidavit from such witness) is to be subjected to less stringent requirements than an affidavit from the witness himself, arguing that it is. We do not agree. Rule 204(c) requires that “acts and circumstances” be set out in “each” affidavit and that the affidavits “collectively” establish a prima facie case. Although Rule 204(c) requires that the “information and belief” affidavit of an expected witness’ testimony be necessary to overcome the patentee’s filing date, it is clear that the “acts and circumstances” requirement for “each” affidavit applies to it and that such affidavit plus any other(s) must collectively establish a prima facie case.

The board also properly noted that it is the expected testimony of a witness which is to be set forth upon information and belief in the affidavit, not the knowledge, of counsel, unless, of course, counsel is to be called as a witness. Moreover, inasmuch as the purpose of Rules 204(c) and 228 is to assure that a patentee is not subjected to the unnecessary burden of being put in interference, it follows that there should be some showing that the particular witness is indeed expected, to testify. After all, if such witness is unlikely to appear, it would be manifestly unfair to the patentee and the Patent Office for the interference to proceed. Here, appellant has made no showing that either the inventor or the corroborating witness, McKeough, is indeed expected to testify.

In view of the foregoing, we hold that appellant’s affidavits were inadequate for purposes of Rules 204(c) and 228 and affirm the decision of the board.

Affirmed.

      . 204. Interference with a patent; affidavit [OR DECLARATION] by junior applicant. í¡; sjs
      (c) When the effective filing date of an applicant is more than three months subsequent to the effective filing date of the patentee, the applicant, before the interference will be declared, shall file two copies of affidavits or declarations by himself, if possible, and by one or more corroborating witnesses, supported by documentary evidence if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle him to an award of priority with respect to the effective filing date of the patent. This showing must be accompanied by an explanation of the basis on which he believes that the facts set forth would overcome the effective filing date of the patent. Failure to satisfy the provisions of this section may result in summary judgment against the applicant under § 228. Upon a showing of sufficient cause, an affidavit or declaration on information and belief as to the expected testimony of a witness whose testimony is necessary to overcome the filing date of the patent may be accepted in lieu of an affidavit or declaration by such witness. If the examiner finds the case to be otherwise in condition for the declaration of an interference he will consider this material only to the extent of determining whether a date prior to the effective filing date of the patent is alleged, and if so, the interference will be declared. (See also rule 228). [Emphasis supplied.]

      . 228. Summary judgment. When an interference is declared on the basis of a showing under rule 204(c), such showing will be examined by an Examiner of Interferences. If the Examiner considers that the facts set out in the showing provide sufficient basis for the interference to proceed, the interference will proceed in the normal manner as provided by the regulations in this part; otherwise an order shall be entered concurrently with the notice of interference pointing out wherein the showing is insufficient and notifying the applicant making such showing that summary judgment will be rendered against him because of such insufficiency at the expiration of a period specified in the notice, not less than 30 days, unless cause be shown why such action should not be taken. In the absence of a showing of good and sufficient cause, judgment shall be so rendered. Any response made during the specified period will be considered by a Board of Patent Interferences without an oral hearing unless such hearing is requested by the applicant, but additional affidavits, declarations, or exhibits will not be considered unless accompanied by a showing in excuse of their omission from the original showing. If the applicant files a response to the order to show cause, the patentee will be furnished with one copy of the showing under rule § 1.204(c) and will be allowed not less than 30 days from its mailing date within which to present his views with respect thereto. He shall also be entitled to be represented at any oral hearing on the matter. The Board will determine, on the basis of the original showing and the response made, whether the interference should be allowed to proceed or summary judgment should be entered against the junior applicant.

      . Appellant’s recitation of dates would, of course, be entitled to consideration by the Primary Examiner, but this would not avoid an adverse decision by the Board of Patent Interferences. See In re Dickinson, 299 F. 2d 954, 49 C.C.P.A. 951 (1962), which was concerned with Rule 204(b), subsequently revised to become present Rule 204(b) and (c). The last sentence of Rule 204(c) appears to have been added to preclude action by a Primary Examiner which is reserved to the Board of Patent Interferences with which this court was concerned in Dickinson. See also In re Gemassmer, 319 F.2d 539, 51 C.C.P.A. 726 (1963), where failure to file a Rule 204 affidavit foreclosed an interference.

      . Rule 204 has been amended since Kistler, but no argument has been presented by either party regarding the effect of such amendments; also, the amendments have been characterized as “minor.” 33 FR 19949 and 34 FR 12629.

      . See George W. Boys, Chairman, Board of Patent Interferences, “Interference Practice —Affidavits Under Rule 204(c),” 826 O.G. 712 (April 21, 1966) where he stated that “Statements of conclusion, for example, that the invention of the counts was reduced to practice, are generally considered to be not acceptable.” See also George W. Boys, “Changes in the Rules of Practice and in Procedures Relating to Interferences,” 47 J.P.O.S. 761 (1965) and Maurice A. Crews, “Interference Practice and the New Rules,” 48 J.P.O.S. 411 (1966).

      . Although we do not need to decide the point, it would appear to have been prudent for appellant also to have made a showing of diligence assuming arguendo that the documents accompanying the Weiner affidavits established conception, bearing in mind the provisions of 35 U.S.C. § 102(g).


text:
    Application of Arnold E. BLOOMQUIST et al.
    Patent Appeal No. 9048.
    United States Court of Customs and Patent Appeals.
    Dec. 20, 1973.
    Bruce Tittel, Wood, Herron & Evans, Cincinnati, Ohio, attorney of record, for appellants; William Kammerer, Columbus, Ohio, Ashland Oil Inc., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey and Raymond F. Martin, Washington, D. C., of counsel.

      Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This is an appeal from the Board of Appeals’ affirmance of the examiner’s final rejection of appellants’ claims 1-10, all of the claims in the application, serial No. 758,153, filed September 6, 1968. We affirm.

INVENTION

The claims are in product-by-process form and are directed to hindered aliphatic polyisocyanates (polymers) derived by the thermolytic rearrangement of the pendent aminimide groups 1 of an addition polymerization product which has been obtained by the polymerization of a tertiary amine methacrylimide and or vinyl or vinylidene monomer. The reaction scheme of the product-by-process claims can be illustrated as follows:

Tertiary Amine Methacrylimide

Vinyl or Vinyli-dene

Vinyl polymerization product with pendent aminimide groups

Claims 2-7 present preferred reactants and claims 8-10 present various polymer products derived from the claimed polyisocyanates.

Hindered Aliphatic Polyisocyanates

Claim 1 reads as follows:

1. A hindered aliphatic polyiso-cyanate obtained by thermolyzing an addition polymerization product of a tertiary amine methacrylimide and a vinyl or vinylidene monomer copoly-merizable therewith.

PRIOR ART

The Patent Office relied on U. S. Patents 2,326,287 and 2,334,476, granted to Coffman. Since these references are substantially the same for purposes of this case, only one (the earlier) will be considered. Coffman discloses the eopolymerization of isopropenyl isocyanate and a vinyl or vinylidene monomer. The solicitor concedes that the process of Coffman is different from that of appellants’ product-by-process claims, since it involves only one step (as opposed to two) and no thermolyzing step. No final polymer structure is disclosed by Coffman, but the parties agree that the polymer of Coffman has the same basic structure as the claimed hindered aliphatic polyisoeyanates.

It should be noted that the values of subscripts x and y in the above illustration of appellants’ claims determine the monomer distribution profiles of the polymer chain. Thus, for a general polymer formula-^A^y-(B)^ , the following polymer chains with the various monomer distributions result: when y and x are both 2,-fjfA - A-)-(B - B fj — n ; when y and x are both 1, -gA-) — (B-ffñ ; and when y is 1 and x is 2,-gA3-(B - B-)] — a •

AFFIDAVIT

Neither appellants nor Coffman specifically disclose the values of subscripts x and y. However, for the purpose of showing that the monomer distribution profiles of the claimed aliphatic polyiso-cyanates are different from those of Coffman, appellants filed a Rule 132 affidavit by Dr. Culbertson, one of the inventors. The affidavit “categorically states that the isocyanate containing co-polymers disclosed and claimed in the above-entitled application will exhibit different monomer residues distribution profiles along the polymer chain in comparison with any corresponding copoly-mer derived by the copolymerization of isopropenyi isocyanate.” It also states that different monomer distribution profiles will result in different polymer properties. For the purpose of “factually supporting” these statements, Dr. Culbertson in his affidavit explains:

In addition copolymerization, the Alfrey-Price Q and e-values are used extensively to describe the copolymeri-zation properties of vinyl or vinyli-dene type monomers. Since Q is a measure of the general reactivity of the monomer and e depends on the polar properties on the monomer, these two parameters are regarded as being constant and unique for every given monomer, regardless of the copolymer-ization system. The Q and e- values are related to the monomer reactivity ratios . . . .”

It should be noted that the Q and e-values are determined empirically. The monomer reactivity ratios which are calculated by certain equations are then used to classify the copolymerization product into five classifications, namely: random copolymers, alternating copoly-mers, block copolymers or a physical mixture of two homopolymers, a copoly-mer of mostly one monomer or essentially a homopolymer, and a highly regular alternating copolymer.

Using the Alfrey-Price formula, Dr. Culbertson then predicts the monomer distribution profiles of six copolymer products. In the first example, vinyl acetate (vinyl monomer) was employed with each of the following monomers, separately: TMA (trimethylamine methacrylimide — one of appellants’ preferred tertiary amine methacrylimides), DHA (beta-hydroxypropyl dimethyl-amine methacrylimide — another of appellants’ preferred tertiary amine methac-rylimides), and IPI (isopropenyi iso-cyanate of Coffman). The results from the Alfrey-Price formula indicate that the DHA - VA copolymer is highly alternating (- DHA - VA - DHA - VA-DHA - VA etc.); that the TMA - VA and IPI - VA systems would result in a copolymer consisting mostly of TMA or IPI. The Alfrey-Price formula, however, indicates that the IPI - VA system would have shorter IPI blocks connected by VA residues than the TMA - VA system.

Another example employed n-butyl ac-rylate (BA), a different vinyl monomer from vinyl acetate. TMA, DHA, and IPI were again used. The results of all three systems indicated an alternating copolymer would result in each, but the following order of the three systems shows their tendency to form a highly regular, alternating copolymer: DHA-BA »> IPI-BA > TMA-BA.

REJECTION

In rejecting the claims as anticipated by Coffman under 35 U.S.C. § 102, the examiner found the affidavit unpersuasive for a number of reasons; first, the affidavit describes only theoretical aspects of the monomer distribution profile ; second, the affidavit sets forth mere conclusions rather than facts; third, the affidavit does not show any actual comparison of the claimed polymers with the polymers of Coffman; fourth, no explanation is made of how the specific copolymers employed in the affidavit are commensurate with the scope of the claimed polymers; and fifth, “No allegation is made that monomer distribution is in no way dependent on polymerization conditions . . .

The board was “in full agreement with the Examiner’s position” and said that the claimed polymers are not restricted to the argued polymers. It also said :

The conditions of polymerization, including temperature, pressure, catalyst and, most important, proportion of reactants, as well as the manner in which the reactants are added to each other, are not set forth, and entirely different products will be obtained, dependent upon such factors. Appellants recognize and even depend upon differences in speed of reactivity of various monomers. It is thus apparent that the broad scope of monomers included in claim 1 will produce different distributions of polymeric products when reacted with different proportions of the methacrylimide reactant.

OPINION

The issue of anticipation centers around the values of subscripts y and x of the hindered aliphatic polyisocyanates of appellants’ invention resulting from the particular process in the product-by-process claims in comparison with those values which may result from the process of Coffman. The Culbertson affidavit is crucial to this issue.

The board refers in its opinion to the “theoretical argument in the affidavit, unsupported by actual comparative data” and states that it is unpersuasive of merit in appellants’ position. Appellants’ response is that the Alfrey-Price formula used in the affidavit utilizes published and accepted data which were previously empirically determined by others skilled in the art and that the board’s position is contrary to established rules of evidence and to decisions of this court.

The primary deficiency of the affidavit, which is discussed in the board’s opinion, is the failure to consider the effect on resulting polymers of polymerization conditions of temperature, pressure, catalyst, monomer proportions, and the method in which the monomers are added to each other. These do not appear to be covered by the Alfrey-Price formula, which employs reactivity ratios for the monomers.

Different polymers (i. e. having different values of subscripts x and y discussed above under “INVENTION” and “PRIOR ART”) will result from a different proportion of monomers, as evidenced by a different monomer distribution profile along the polymer chain. Accordingly, different proportions of the tertiary amine methacrylimide monomer of claim 1 will result in different polymers. So too, different proportions of monomers in Coffman will result in different polymers. Therefore, we agree with the board that the affidavit is unpersuasive in showing that the monomer distribution profiles of the claimed poly-isocyanates are always different from those of the polyisoeyanates of Coffman.

We also agree with the board that there is no explanation of how the polymers in the affidavit support any difference (i. e. in the values of subscripts x and y) over Coffman for the claimed polyisocyanates. As noted by the examiner, there is no allegation, much less a showing, that the polymerization conditions (including the monomer proportions) do not affect the monomer distribution profile.

Finally, as discussed above under “AFFIDAVIT” and as noted' by the solicitor, the affidavit shows that use of different vinyl monomers will affect the resulting polymer product. Thus, the TMA - VA system produces a polymer with blocks of TMA and VA residues; whereas the TMA-BA system results in an alternating copolymer. The point is that different vinyl monomers result in different polyisocyanate structures, which hardly supports the “categorical” opinion in the Culbertson affidavit that use of a tertiary amine methacrylimide will always result in a different polymer from a combination of isopropenyl iso-cyanate with any vinyl monomer.

In view of the foregoing, we agree with the board that the Culbertson affidavit is insufficient to avoid anticipation of the claimed copolymers by Coff-man for the purposes of 35 U.S.C. § 102 and affirm the board’s decision.

Affirmed.

      . Issued August 10, 1943, and November 16, 1943, respectively.

      .

      . The affidavit appears to disclose some relationship between monomer proportions, reactivity ratios, and resulting polymer types, but how this relationship supports any difference over Coffman is not shown nor is any difference from this relationship obvious.

      . This is not to say that, as far as it goes, the Alfrey-Price formula is not of probative value. Theoretical results obtained by the application of valid scientific rules or formu-lae to proven facts, whether such results are labeled “facts,” “opinions,” or “conclusions,” are entitled to as much weight as empirical results.

      . Support for the board’s position on this point is found in appellants’ failure to compare the closest prior art noted in Coffman. The particular vinyl monomer reacted with isopropenyl isocyanate in example 1 of Coff-man is methyl methacrylate. However, the Culbertson affidavit employs only vinyl acetate and butyl acrylate. Thus, appellants have not shown that the polyisocyanates of example 1 of Coffman do not result in the same monomer distribution profiles as the claimed polyisocyanates.

      . In fact, appellants’ own brief states:
      In contrast to the prior art, the present invention permits the ready obtainment of a broad class of polyisocyanates. Such compounds may, 6y varying reaction conditions, be produced with as few or as many isocyanate groups as desired. (Emphasis supplied).
      However, no explanation is given of how these variations in reaction conditions support a difference from the prior art. As noted above, the sole difference lies, if at all, in the monomer distribution profile — not in the structure of the individual units of the polymer chain. Appellants’ specification invites the examiner’s and board’s concern over the polymerization conditions by stating:
      The ratio of the amine acrylimide to the comonomer or comonomers copolymeriza-ble therewith can vary extensively depending in the main upon the particular use application envisioned for the final poly-isocyanate product. In other words, polymers can be prepared in accordance with this invention containing a statistical distribution of as few or as many pendant aminimide groups desired. Likewise, the average polymer length of the copolymeri-zation product is essentially a matter of choice. It is accordingly feasible to prepare as high a molecular weight polymer as desired consistent with the limiting factors in this regard known to exist in the art of addition polymerization. Similarly, the copolymerization reaction can be regulated or comonomers appropriately selected to produce low molecular weight polymers including dimers, trimers, etc. (Emphasis supplied).


author: PER CURIAM.

text:
    Application of John F. WAYMOUTH and Frederic Koury.
    Patent Appeal No. 8991.
    United States Court of Customs and Patent Appeals.
    Jan. 24, 1974.

      James Theodosopoulos, Danvers, Mass. (GTE Sylvania Incorporated), attorney of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. William H. Beha, Jr., Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, JJ.
   ON PETITION FOR REHEARING

PER CURIAM.

The Patent Office petitions for a rehearing of the above appeal, rearguing the issue of the minimum temperature of 580° C. limitation, suggesting' a substitute for the penultimate paragraph in our opinion handed down November 8, 1973, 486 F.2d 1058, and requesting that the remand be vacated and that we review the merits of the new rejection held by us to have been made by the board.

Appellants oppose the petition insofar as any change is sought in our ruling with respect to the 580° C. minimum temperature limitation, enter no objection to the suggested substitute paragraph, waive their right to the “full opportunity to respond to the new rejection” in accordance with our remand, and join the Patent Office in requesting that we rule on the merits of the new rejection, but without scheduling a rehearing.

The petition is granted to the extent that we review the merits of said new rejection, reconsider our opinion and decision, and modify them as follows :

1. The penultimate paragraph of our opinion is modified by striking the period at the end thereof and inserting: “for purposes of interference.”

2. The remand is vacated.

3. The decision of the board that the limitation “sodium iodide present in amount of at least 0.17 mg./cc. of said arc tube volume” constitutes new matter for purposes of 35 U.S. C. § 132, requiring rejection of claims 18 through 21, is affirmed. As pointed out by the board, appellants’ specification, unlike Edris, does not disclose the volume of the discharge lamp or any basis for determining the volume; and the Koury affidavit does not overcome this deficiency because its conclusion is unaccompanied by the facts needed to support it. Appellants’ waiver precludes consideration of further showing or amendment which might have been made under Rule 196(b). However, we point out that the fact that both parties have joined in requesting the court to rule on the merits of a new rejection does not preclude the court from remanding a case for further proceedings before the Patent Office when the court deems the circumstances appropriate.


author: MARKEY, Chief Judge.

text:
    Application of David B. WITTRY.
    Patent Appeal No. 9089.
    United States Court of Customs and Patent Appeals.
    Jan. 10, 1974.
    Reconsideration Denied March 28,1974.

      Theodore H. Lassagne, Los Angeles, Cal., attorney of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the rejection of claims 1-4, 6-13 and 15-28, all the remaining claims in appellant’s application serial No. 862,985, filed August 19, 1969 for reissue of patent No. 3,107,297, issued October 15, 1963. The decision is affirmed as to claims 16-20 and 22-28 and reversed as to claims 1-4, 6-13,15 and 21.

The Invention

The invention relates to an “Electron Probe X-Ray Analyzer Wherein the Emitted X-Radiation Passes Through the Objective Lens.” Instruments of this type are used for quantitatively determining the chemical composition of a relatively minute portion of a material by bombarding the portion with electrons and measuring the X-ray emission caused thereby. Fig. 3 is illustrative:

An electron gun (not shown) projects electrons vertically downward onto a specimen 36 being analyzed. Resulting X-rays, passing upwardly along the dashed line to a crystal 66, are projected by the crystal to a spectrometer for analysis. A magnetic housing 54 enclosing an electromagnet 62 is shaped to provide a central opening 68 for receiving a holder for the specimen 36 adjacent two spaced plate members 50 and 52. A magnetic gap is formed by conically tapered coaxial apertures 56 and 58, respectively, in the plates 50 and 52, said apertures being shaped to lie upon the conical surface, the apex of which lies at the focus of the lens formed thereby to focus the electron beam on a minute portion of the specimen located at that point. The tapering of the magnetic gap in the direction of the electron beam is said to minimize the magnetic field of the lens to permit analysis of ferromagnetic specimens without significantly affecting the electronic optical properties of the lens. An important feature of the lens is that improved results are provided in that X-rays directed at a relatively large angle to the specimen surface can be passed to the spectrometer for analysis. Elements 38, 82, 74, 80 and 76 constitute a system for optical examination of the specimen.

Claim 3, which appellant terms his broadest patent claim, reads:

3. Apparatus for irradiating a material with electrons and sensing X-rays emitted by the material in response to such irradiation comprising means for directing an electron beam upon the surface of a specimen material, an electron lens for focusing the beam upon a selected region of the specimen surface, said electron lens including a member defining a magnetic gap coaxially aligned with and tapered in the direction. of the electron beam, means for supporting a specimen adjacent to the apical end of said gap, and means for sensing X-rays emitted by a specimen so supported and passing through said lens.

Claim 17 emphasizes a different aspect of the invention and reads as follows:

17. Apparatus for irradiating a material with electrons and sensing X-ray emitted by the material in response to such irradiation comprising means for directing an electron beam upon the surface of a specimen material, said directing means including a magnetic lens for focusing the beam upon a selected region of the specimen surface, said magnetic lens including a plate member normal to the electron beam and having a relatively small opening therethrough shaped to lie on a conical surface converging to a focus of said lens beyond said plate member in the direction of the electron beam and coaxially disposed with the electron beam, and a coil housing extended from said member on the opposite side thereof from the point of origination of the electron beam, said coil housing being annular in form and having a central opening substantially larger than the opening through said plate member to permit placement of a specimen substantially larger than the opening through said plate member at the focus of said lens closely adjacent to said plate member on the same side thereof as said coil housing.

The Rejection

Of the appealed claims, claims 1-4, 6-13 and 15 are from the original patent and claims 16-28 are new claims. Claims 16, 18-20, 22, 23 and 25-28 are rejected as being broadened claims in a reissue application filed outside the two year statutory period (35 U.S.C. § 251) and as drawn to new matter. Claims 16-20, 23 and 25 are rejected as unpat-entable under 35 U.S.C. § 103 over certain prior art. All the claims stand rejected as not being supported by a sufficient reissue declaration or oath.

OPINION

The patent statutes limit the Commissioner’s reissue authority to patents which are, through error and without deceptive intention, deemed wholly or partly inoperative or invalid, “by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.” 35 U.S.C. § 251. As recognized in In re Doll, 419 F.2d 925, 57 CCPA 822 (1970), requirements for reissue oaths are set forth in Rule 175, which reads in pertinent part:

175. Reissue oath or declaration, (a) Applicants for reissue, in addition to complying with the requirements of the first sentence of rule 65, must also file with their applications a statement under oath or declaration as follows:
(1) That applicant verily believes the original patent to be wholly or partly inoperative or invalid, and the reasons why.
(2) When it is claimed that such patent is so inoperative or invalid “by reason of a defective specification or drawing,” particularly specifying such defects.
(3) When it is claimed that such patent is inoperative or invalid “by reason of the patentee claiming more or less than he had a right to claim in the patent,” distinctly specifying the excess or insufficiency in the claims.
(4) Particularly specifying the errors relied upon, and how they arose or occurred.

Appellant does not question the validity of Rule 175 as establishing the criteria by which the Commissioner is to measure his determination of propriety of reissue under § 251. Cf. Ex parte Fulla-gar, 40 App.D.C. 510, 1913 C.D. 444 (1913).

Appellant, in a declaration accompanying the reissue application, stated that he believed his patent to be - “possibly partly inoperative” because of the inadequacy of description of the objective lens. He referred to the inadequacy as lying in the description of the lens apertures 56 and 58 and as rendering the terminology employed in certain of the claims subject to misinterpretation, the nature of which was not indicated. Nor was any explanation given as to how claims 16-22, the new claims then in the application, obviated the “misinterpretation.” Appellant further indicated that his assignee, upon bringing suit for infringement, was advised of prior art, certain of which was unknown to him prior to filing the original patent application.

Appellant subsequently filed a supplemental declaration, indicating that there was some problem in construing the term “through the lens” in patent claims 3, 10 and 11. He further asserted that the conical wall taper of at least the lens aperture nearest the specimen assumed a new importance in light of prior art produced by the defendant in the suit. He also declared that “more limited” claims 17 and 21 were substituted for patent claims 5 and 14, respectively, which were “regarded as not sufficiently definite to distingush from such prior art.” However, as to claims 16, 18-20 and 22-28, the supplemental declaration merely asserted that they “additionally and more clearly define the invention while also distinguishing it from the prior art.”

In sustaining the rejection, the board considered the original claims as drawn to a structure in which the returned X-rays pass through the magnetic lens and the reissue claims, for the most part, as drawn to a structure in which the returned X-rays need not pass through the entire lens. It further stated that “a reissue declaration that fails to advance any convincing reason for such a change in structure is defective.”

We find that the description in the patent of lens apertures 56 and 58 is entirely adequate to provide an understanding of tbe invention and the claims, particularly in view of the drawing. Nothing in appellant’s declarations explains how the additions in the reissue specification correct any error therein, or how they have any effect on the original claims.

Additionally, the declarations do not present any reasonable explanation of any errors in the original claims which the reissue would overcome. As to claims 16, 18-20 and 22-28, the declarations do not assert that there was any error by reason of the patentee claiming more or less than he had a right to claim or specify the excess or insufficiency required by Rule 175(a) (3). The failure to assert a difference in scope between the original and reissue claims is a fatal defect. The patent statutes afford no authority for the reissue of a patent merely to add other claims, of the same scope as those already granted. See In re Rogoff, 261 F.2d 601, 606, 46 CCPA 733, 738 (1958). The case as to these claims is distinguishable from Boll, supra, wherein the reissue. oath stated that none of the patent claims afforded protection to a specified embodiment of the invention covered by the new reissue claims. The rejection of claims 16, 18-20 and 22-28 for insufficiency of the reissue declaration is affirmed.

The rejection for insufficient reissue declaration is reversed as to claims 17 and 21. The supplemental declaration clearly stated that those claims were substituted for and more limited than claims 5 and 14 of the patent and that said claims 5 and 14 were not sufficiently definite to define over the new prior art. We regard those statements as complying with Rule 175 under the circumstances of this case.

Claim 17 was also rejected for obviousness in view of Duncumb and Telonde.

The Duncumb reference shows an emission microscope structure in which the coil housing has a central opening substantially larger than the openings in the plates forming the magnetic lens and receives a specimen as defined in claim 17, supra. Telonde relates to a similar instrument, with spaced housing plates forming the gap for the magnetic lens, having openings of different sizes, lying on a conical surface, and converging to focus on a specimen. Telonde’s housing opening is, however, on the opposite side of the lens from the specimen, that is, on the side through which the electron beam is projected.

We fully agree with the examiner that “it would be [sic] obvious that the coil [with its housing] could be positioned on either side of the magnetic beam gap relative to the beam axis in view of the alternative locations” shown" in the two references. The rejection of claim 17 on the prior art is, therefore, affirmed.

New claim 21 was rejected only on the basis of the insufficiency of appellant’s reissue declarations. Our reversal of that rejection indicates a possibility that a reissue patent may eventually be obtained by appellant. Hence the rejection of original patent claims 1-4, 6-13 and 15 for insufficiency of the reissue declaration must be reversed.

In view of the foregoing, no useful purpose would be served in a discussion of the rejections based on claim breadth, on the presence of new matter or, except for claim 17 discussed above, under 35 U.S.C. § 103.

In summary, the rejection of claims 16, 18-20 and 22-28 for insufficiency of the reissue declarations is affirmed, the rejection of claim 17 under 35 U.S.C. § 103 is affirmed, and the rejection of claims 1-4, 6-13, 15 and 21 is reversed.

Modified.

      . We are aware that Section 1401.8 MPEP states:
      A ruling that the oath or declaration is insufficient should be made a general ground of rejection of all claims.
      That instruction obviously is not applicable to original patent claims where, as here, the insufficiency does not apply to all the new claims in the reissue application.

      . A Scanning Microscope for X-Ray Emission Pictures, by P. Duncumb and V. E. Cosslett, from X-Kay Microscopy and Micro-radiography, edited by V. E. Cosslett et al., Academic Press, Inc., New York, 1957, pp. 374-380.

      . The Electronic Micro-probe, from Telonde, No. 2, 1957, pp. 30-36 (English translation from French).


author: ALMOND, Senior Judge.

text:
    Application of Frederick N. ZIMMER-MANN (two cases).
    Patent Appeal Nos. 9131, 9132.
    United States Court of Customs and Patent Appeals.
    Jan. 17, 1974.

      Callard Livingston, Evanston, 111., attorney of record, for appellant; Francis D. Thomas, Jr., Arlington, Va., of counsel.
    J. F. Nakamura, Washington, D. C., for the Commissioner of Patents; William H. Beha, Jr., Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

These consolidated appeals are from decisions of the Patent Office Board of Appeals affirming the examiner’s rejections, made under 35 U.S.C. § 103, of claim 14 of appellant’s application entitled “Magnetically Coupled Pump” and claims 18, 19, and 21 of appellant’s application entitled “Pump Impeller and Coupling Magnet Structure.” We affirm.

Invention

Appellant’s inventions in these appeals relate to novel forms of rotary impellers used in magnetically-coupled centrifugal pumps. The magnetically-coupled pumps use two permanent magnets to couple the pump impeller to the motor drive shaft. A first magnet is mounted on the impeller which is sealed inside the pump housing. The second magnet, located exterior to the housing and surrounding the first magnet, is mounted on the motor drive shaft to complete the magnetic-coupling and thereby drive the impeller. This construction avoids use of a drive shaft extending through the housing, with its attendant bearing and seals, as required where a direct drive is used.

Appellant’s invention in Appeal No. 9131 is described in claim 14, reproduced below:

14. A fluid impeller adapted to be rotated about an operating axis by magnetic coupling with a driving magnet, and comprising a molded body of non-metallic plastic material having integrally conformed configurations disposed substantially symmetrically about an operating axis therethrough, said configurations including a hub portion disposed radially about said axis, and fluid-impelling configurations disposed about said axis in integral connection with said hub portion, and coupling magnet means arranged within said hub portion symmetrically about said axis and wholly enveloped by and contained within the molded plastic material defining said hub portion.

Appellant states that wholly enveloping the impeller magnet results in a pump suitable for handling active acids such as hot sulfuric acid which might otherwise be harmful to the magnet.

Claim 18, which is accepted as representative of the subject matter of appeal No. 9132, reads:

18. In a motor pump unit of the type including a motor having a shaft extending from one end thereof, a centrifugal pump comprisihg a housing and an impeller rotatably mounted in the pump housing, together with a magnetic coupling including and [sic] annular driving magnet connected to the motor shaft, the improvements which comprise: the combination with an annular driving magnet connected to the motor shaft; an annular driven magnet connected to the impeller forming therewith a rotor; and a stovepipe hat-shaped nonmagnetic separator including a cylindrical tubular diaphragm separating the magnets and connected to and closing one side of the pump housing, said rotor being mounted on a shaft that is supported at at least one of its ends on a wall portion of said housing the rotor being freely mounted on the shaft for rotation relative thereto, said impeller including a plastics material hub hav- • ing a tubular portion on which said driven magnet is mounted, and said unit including a molded plastics materials shell over the outer part of said driven magnet unitized with said hub.

Appellant relies on the last 5 lines of claim 18 to distinguish over the prior art and states that claims 19 and 21 stand or fall with claim 18. The purpose of the “molded plastics shell” in claim 18 is disclosed as preventing cracks and fissures from developing in the magnet as a result of exposure to very hot or corrosive liquids. The periphery of the tubular portion of the impeller has in the order of .025 inch clearance with the surrounding tubular diaphragm of the separator. Thus, a slight radial deformation of the magnet from cracking and fragmentation would result in its impinging the tubular diaphragm and impeding rotation of the impeller.

Rejection

The rejection of claim 14 and claims 18, 19, and 21, the claims in both appeals, was for obviousness in view of Zimmermann and Rossinger. Appellant urges that a patent to Berner which was considered alternative to Zim-mermann with respect to claims 18, 19, and 21 is cumulative. We agree and will not discuss it further.

A patent to Farrelly et al. was also referred to with respect to claims 18, 19, and 21, but we find it requires no discussion here.

Zimmermann discloses a magnetically-coupled pump which has an impeller that is similar to appellant’s inventions with the primary difference being that the impeller includes an exposed magnet mounted on the impeller hub.

Rossinger discloses a motor operated, magnetically coupled stirrer. The stirring element consists of a permanent magnet that is placed in a liquid-filled vessel and caused to rotate in response to the rotation of an exterior motor driven magnet. When the device is to be used with a liquid of such a nature that it would react with the stirring element, the element is encased in a thin covering or shell of an inert material such as plastic.

The examiner considered that it would have been obvious “to wholly envelope the magnet means 31 of Zimmermann in the manner and for the same reason as taught in Rossinger to render claim 14 as unpatentable under 35 U.S.C. § 103.” In affirming the examiner, the board agreed with his reasoning and further noted:

Although the [claim calls] for a magnet “contained within the molded plastic material[”] of said hub portion,” [sic] * * *, we find * * * [this limitation] to be met by a combination of the references relied upon. It cannot be determined where a coating ends and an encasement begins, moreover, it appears that a coating does envelop or encase an object. We note that the material of the hub (72) of the Zimmermann patent is not stated; however, it appears obvious to us that the hub could be made of plastic. It ‘is our opinion that if the magnet (31) of Zimmermann were coated with plastic as taught by Rosinger, then claim 14 fails to define a structure which is patentable over this combination of references.

With regard to appeal No. 9132, the board gave as its reasoning for affirming the rejection:

We agree with the examiner that the teaching supplied by the Rossinger patent would be sufficient to lead one of ordinary skill in the art to cover the driven magnet of either the Berner or Zimmermann patents with a thin-walled plastic shell. * * * It is our position that the specific magnet mounting and covering structure claimed is obvious in view of the cited prior art. With regard to the results achieved by the claimed structure, we agree with the examiner that such results are inherent in the obvious structure taught by the references.

OPINION

We find no error in the decisions by the board that appellant’s claimed inventions would have been obvious in view of Zimmermann and Rossinger. We have considered all the specific limitations of claims 14 and 18 argued by appellant, as the board must have done in making its decisions.

Appellant contends that the board did not take into account all the limitations in claim 14 such as the recitation beginning with “a molded body of non-metallic plastic material.” We think that the above excerpt from the board’s decision in appeal 9131 stating that this would have been obvious, with which we agree, lays to rest this argument.

If it was desired to use a magnetically-coupled pump impeller in a corrosive environment it would certainly have been obvious in view of Rossinger that an exposed potentially reactive element such as the magnet would need be inert or protected by an inert covering “such as plastic. Protecting the magnet would logically require that it be “wholly enveloped” by the plastic covering. Thus, we think, as did the board, that a magnet coated with plastic and mounted on a hub made of the same material would have been obvious. Appellant argues that claim 14 is directed to a device wherein the magnet is embedded in the hub-portion of a monolithieally molded plastic hub-impeller structure. He would have us accept this as being significantly different and unobvious from a structure wherein the magnet is merely coated as suggested by Rossinger. However, on this point we agree with the following observations made by the solicitor:

It would appear to be only a matter of design expediency whether the magnet means is wholly enveloped by a plastic coating or shell and the hub shaft, or by the material of the impeller hub

itself. Both function in substantially the same manner with substantially the same means. Moreover, appellant has not argued that the monolithic expedient produces any new or unob-vious result not produced by the coating expedient.

For the same reasons stated above we agree with the board’s decision in appeal No. 9132 that the specific mounting structure of claim 18 would have been obvious. The plastic coating on the magnet that is mounted on the plastic hub is “unitized,” whether it be joined to the hub through a force fit or a cemented connection as appellant discloses.

Appellant’s argument that a protective covering for Zimmermann’s magnet, such as might be suggested by Rossin-ger, would not inherently prevent fragmentation of the magnet is not persuasive. Rossinger discloses that the thickness of its “thin” protective covering is sufficient to “prevent an interaction” between the material of the magnet and liquid being stirred. Appellant discloses only that the shell of the impeller magnet is of “thin minimal thickness.” A quantitative difference is not apparent, and fragmentation appears to be primarily a consequence of corrosion.

An affidavit, initially presented under Rule 131 to overcome an earlier filed reference, states that impeller magnets coated with “008 [inch] thickness of epoxy” were ordered made on January 1, 1964 and sold sometime thereafter. Appellant argues that this epoxy coated impeller magnet is equivalent to the modification of Zimmermann that the board considered Rossinger to suggest and that neither the “claimed concepts, structure or results” were produced. We find no basis in the affidavit to support this argument of appellant.

For the foregoing reasons, the rejections of claims 14 and claims 18, 19 and 21 are affirmed.

Affirmed.

      . Serial No. 845,634 filed July 7,1969.

      . Serial No. 854,019 filed August 18, 1969.

      . U.S. 3,205,827 issued September 14, 1965.

      . U.S. 2,350,534 issued June 6, 1944.

      . U.S. 2,970,548 issued February 7, 1961.

      . U.S. 2,555,686 issued June 5, 1951.

      - In its decision, (1R-35) the Board stated “that the material of the hub (72) of the Zimmermann patent is not stated; however, it appears obvious to us that the hub could be made of plastic.” Appellant has not refuted this statement.