author: RICH, Judge.

text:
    Richard G. RION et al., Appellants, v. Alfred S. AULT et al., Appellees.
    Patent Appeal No. 8591.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.
    Rehearing Denied Oct. 25, 1973.
    Milton L. Simmons, Cleveland, Ohio, attorney of record, for appellants.
    Otto R. Krause, Hill, Sherman, Me-roni, Gross & Simpson, Chicago, 111., attorneys of record, for appellees.

      Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   ON REHEARING

RICH, Judge.

Our original opinion of February 24, 1972, was published at 455 F.2d 570. We there reversed the decision of the Board of Patent Interferences awarding priority to Ault et al. (Ault) and remanded because we found “there is no interference in fact.” Ault petitioned for rehearing and Rion et al. (Rion) opposed. The Patent Office Solicitor called our attention to the fact that under the Patent Office Rules a holding of no interference in fact is not appropriate under the facts of this case and that the case of Brailsford v. Lavet, 50 CCPA 1367, 318 F.2d 942 (1963), which we had cited in support of the contrary proposition, was distinguishable on its facts. We now agree with this Patent Office position. We granted rehearing on November 9, 1972, and the ease was rebriefed at our request and reargued on February 5, 1973.

We have fully reconsidered the case, concluding that the reasoning of and result reached in our prior opinion was erroneous. Our opinion of February 24, 1972, is hereby withdrawn and replaced by the following opinion. The decision announced therein is vacated.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to Ault, the senior party, on the ground that Rion’s evidence failed to establish either a conception or reduction to practice prior to Ault’s filing date. The board also held, contrary to Rion’s contentions, that Ault had the right to make the counts and, in connection with this holding, ruled that the definition placed on the counts by the Primary Examiner, who drafted them and suggested them to both parties, is controlling.

This appeal by Rion does not question the board’s holding that Rion did not overcome Ault’s record date and, therefore, so far as priority in time is concerned, Ault must be accepted as the first inventor of whatever he invented. This appeal, as briefed and argued by Rion, essentially raises only the question of Ault’s right to make the counts. Ault, on the other hand, has raised a question as to whether the issue raised by Rion is ancillary to priority and whether we have jurisdiction to consider it. Ault does not see the issue as one of Ault’s right to make the counts but rather as a question of the definiteness of the counts which, he argues, is a question not ancillary to priority. Neither question can be intelligibly discussed without knowledge of the inventions of the parties and the counts on the basis of which the interference has proceeded.

Background of the Inventions

In the making of enameled sanitary ware such as bathtubs, basins, sinks, and the like, a coating of porcelain enamel is formed on a cast iron base. The enamel is formed by melting on the surface of the article a particulate material called “frit,” which is a special kind of glass composition. The white color in the enamel has long been produced by the use of antimony in one form or another as a frit ingredient. Rion calls this kind of opacification the “insoluble particle” method. It was appreciated that titania (titanium dioxide) would be a better and cheaper opacifier if it could be made to produce a uniform enamel but attempts to use it in the dry enameling process resulted in a mottled appearance. Rion and Ault both discovered that mottling could be eliminated by subjecting the titania-containing frit, before use, to a heat treatment to produce nucleation of the dissolved titania in the frit, the result being a more uniform crystallization of the titania in the enamel coating when it was formed on a hot iron surface.

Frit is produced by mixing the ingredients and melting them at a temperature of the order of 2000° F. or more to form a glass. The molten glass is converted to frit by, for example, pouring it between cooling rolls which form it into a ribbon which is quenched and broken up into particles which may be ground to the desired size. The nucleation heat treatment may take place while the frit is in its initial particulate form.

Rion’s Disclosure

Rion’s application, serial No. 252,622, filed January 21, 1963, contains a “flow diagram,” the steps of which are, in order, as follows, quoting Rion’s words:

Admixture of materials capable of fusing to a vitrified composition, said materials containing a soluble particle opacifier
Fuse materials to a fused mass
Quench said fused mass to the fritted state
Adjust temperature of frit to between 600° F. and 1300° F., below fusion point of said frit
Cool said frit below 600° F.
Apply frit to workpiece and fuse thereon.

With respect to the last step, the practice is to heat the workpiece, such as an iron bathtub or basin, to 1400°-1800° F. in a furnace from which it is withdrawn and coated with frit which is sprinkied onto the hot surface and fuses thereon to form a film. The workpiece is then returned to the furnace to complete the fusion process. This coating process may be repeated until the desired thickness of enamel is produced, after which the workpiece is cooled.

Rion’s application sums up his invention in a single paragraph as follows:

Briefly stated, our invention consists essentially of a method of producing a vitreous composition containing a soluble particle opacifier and adaptable to be used as a protective coating, comprising the steps of melting intimately mixed raw batch materials into a fused mass, quenching said fused mass to the fritted state, adjusting the temperature of said fritted vitreous composition to between about 600° F. and 1300° F., but below the fusion point of said frit, for a time sufficient to precipitate a quantity of the contained soluble particle opacifier, and cooling said fritted vitreous composition to a temperature below said previously adjusted temperature. Applying said fritted composition to a workpiece and fusing said fritted composition thereon provides a vitreous coating therefor of superior appearance and durability. Our invention further consists in the novel fritted composition obtained by said method.

Rion’s specification contains a number of definitions of the terms employed, among which are the following:

3. NUCLEATION TEMPERATURE : * * * shall mean the critical temperature, below the fusion point[,] to which a vitreous composition is adjusted following quenching, at which substantial incipient precipitation of soluble particles from solution in the glass matrix, occurs * * *
* * * * * *
6. FUSED MASS: Throughout the specification and claims, the term “fused mass” shall refer to a vitreous composition in its melted state.
* # * * ■>:■ *-
9. QUENCH: As used in relation to “frit”, the word “quench” shall mean any relatively sudden cooling of a vitreous composition from its fused mass state, through its freezing point to solidification, whether by sudden immersion in water, sudden contact with cooling surfaces, or air, as opposed to the term “annealing” as used in the plate and container glass industries, to denote relatively slow and gradual cooling of a vitreous composition from its melted state to relieve internal stresses.

It is of significance in this case that Rion does not define the term “fusion point.” As will appear, this whole case revolves about this definitional void and confusion as to the meaning of “fusion.”

The Rion application in interference is stated to be a continuation-in-part of application serial No. 127,472, filed July-28, 1961, and abandoned shortly after the instant application was filed. In that parent application Rion, in summarizing the essence of the invention, described the reheating or nucleation step thus:

x x x reheating said frit to a temperature greater than the temperature to which it was previously cooled, but less than the melting point of said frit.

In rejecting his claims, the examiner said, inter alia,

The reheating step is the critical feature of the invention. * * * It is noted * * that the reheating step must be to a temperature less than the melting point of the frit. This feature should be included in all the claims calling for this reheating step. Reheating above the melting point will not give any beneficial results.

Rion acceded to this requirement by amending claims to insert the phrase “but below the fusion point of said frit,” or equivalent phrases, except in one claim where he used the expression “but below the fusion temperature.” In his accompanying “Remarks” he said:

All claims are now limited to reheating and nucleation below the fusion point of the frit in accordance with Examiner’s suggestion * * *.

In the final rejection the examiner pointed out that Rion had overlooked amending some claims, saying:

Claims 1 and 2 are also too broad in that the reheating step should be down to a temperature less than the fusion point of the frit, as was indicated in the last Office Action. Applicant again indicated that all the claims were amended in this respect but claims 1 and 2 were not changed.

Apparently Rion did not further amend but two months later filed his continuation-in-part application instead. When the interference was instituted on the basis of counts drafted by the examiner, Rion’s allowed claims were limited to heat treatment' at a temperature “below the fusion point of said frit” except for claim 18 which said “lower than the fusion temperature of said frit.” There is nothing in the prosecution of record to indicate that “fusion point” and “fusion temperature” were in any way distinguishable.

Ault’s Disclosure

Ault filed application serial No. 86,570 on February 2, 1961, nearly six months before Rion filed his parent application. It is entitled “Method of Preparing Porcelain Enamel Frit for Dry Process Enameling” and is directed, like the Rion application, to the seeding or nucleation of titanium dioxide crystals by heat treating the frit. The essence of his relatively short specification is found in the following extracts:

The range of heat treating temperatures extends from a temperature more than 100° F. above the softening point of the glass, but not more than 400° F. above the softening point of the glass as measured by an interferometer.
X " X X X X X
The glass particles resulting from the quenching are then heated to a temperature at which nucleation of titanium dioxide exists. Nucleation occurs when a number of. atoms present in a disordered state, aggregate to form centers of crystallization, x x x The temperature of nucleation is usually about 250° F. below the point where crystallization can take place. The minimum temperature for heat treatment is well above the softening point for the glass, and is usually at least 140° above the softening point as determined by an interferometer. The maximum temperature is, as stated previously, about 400° F. above the interferometer softening temperature. For best results, the temperature should be below the point where tackiness occurs in the glass.
For the titanium dioxide containing frit of the present invention, treatment time of one minute to twenty-five minutes is sufficient to achieve the desired nucleation. A time not in excess of fifteen minutes is definitely preferred.

Ault describes smelting the frit composition at 2500° F., quenching to break the glass up into particles, reheating to nucleate, and applying the frit to heated articles at temperatures from about 1400° to 1800° F. He says, “The frit is applied to the hot metal articles through a screen in the usual manner and fuses to a uniform enamel * * He gives an example of a particular frit which had an interferometer softening point of 959° F. and was heat treated at 1100° F. for 6 minutes, after which it was ground and sifted onto a hot cast iron surface heated to 1600-1700° F., producing a good enamel coating of uniform cast. He also gives an example of treating another frit composition with a softening point of 950° F. at 1000° F. for 6 minutes which did not produce the improved properties, concluding that 50° above the softening point is not hot enough.

The Counts

On September 23, 1964, the examiner in charge of the Rion and Ault applications suggested two counts to each applicant and each made them without change. Count 1 is for the method of making a frit and count 2 is for the frit. Since the relevant language is the same in both counts, we reproduce only count 1:

1. The method of making an improved titania opacified porcelain enamel frit for dry process application which comprises fritting a molten silicate glass composition containing from about 8% to about 24% titanium dioxide by weight and thereafter heat treating the fritted particles at a temperature sufficiently above the frit softening point, but below its fusion point, for a time period sufficient to cause nucleation of at least some of the titanium dioxide therein. [Our emphasis.]

The Rion Motions to Dissolve

Rion brought three motions to dissolve on the grounds: (1) that the counts are vague and indefinite; (2) they are un-patentable over prior art; and (3) that Ault cannot make them. Ault opposed all motions and the examiner denied them all.

At that time Rion adopted a position to which he has adhered ever since as the foundation of all his arguments. It is that the terms “softening point” and “fusion point” mean exactly the same thing. It was the basis of all three motions, the basis in part of his appeal to the board, and the sole basis of his appeal here.

It should be apparent from what has been said that the term “softening point” in the counts was derived by the examiner from the Ault application wherein it is more specifically referred to as the interferometer softening point. The meaning of this term is not in dispute on this appeal. It should also be apparent that the examiner took the term “fusion point” from the Rion application in interference, and from its parent application into which it was injected by amendment when the examiner asked to have all claims limited to a maximum heat treatment temperature “less than the melting point of the frit,” as disclosed.

In deciding the motions, the examiner said, “There is no question as to what is meant by 'fusion point’. The issue is whether it is also the softening point.” The examiner held that Rion had not established the equivalency of “softening point” and “fusion point.” His decision, on reconsideration by another examiner, was adhered to. Rion petitioned the Commissioner who found no abuse of discretion.

The Board Decision

As we noted, the board found that Ault was the prior inventor of subject matter within the counts. On the issue which is before us — Ault’s right to make the counts — it held:

The heat treatment of the counts defines a temperature x'ange of the transition between a point where the glass begins to soften and where it becomes molten. This is the definition placed on the counts by the Primary Examiner who, in drafting said counts for interference purposes, set forth the bounds to which the prioxñty proofs of the parties would be limited. Under ■the circumstances of this case, particularly in view of the fact that neither pax'ty sought to change or modify the language of the counts, the definition of the terms of the counts by the Primary Examiner is controlling notwithstanding any alleged inconsistency with the technical definitions of the softening point and fusion point not found within the disclosures of the applications involved. Since the counts, as drafted and defined by the Primary Examiner, are broad enough to include within their scope the invention disclosed by the Ault et al. application, Ault et al. have the right to make the counts.

OPINION

The Jurisdictional Question

The first matter to be decided is Ault’s contention that this court is without jurisdiction to hear the sole question presented. Ault bases his contention on his theory that the sole question presented by this appeal is indefiniteness of the counts and that indefiniteness is not a question ancillary to priority, citing, in support of the latter proposition, px’ecedents in this court and an article by Kreek entitled “Ancillary and Non-Ancillary Matters in Patent Interferences,” 36 JPOS 7 (1954). Conceding, arguendo at least, that indefiniteness is not ancillary, Ault’s argument falls because the sole issue on appeal is not indefiniteness of the counts. The issue on appeal is whether Ault can make the counts, a question which is ancillary to priority and over which we do have jurisdiction. See Kreek, supra, and cases cited therein. We therefore proceed to consideration of Ault’s right to make the counts.

Ault Can Make the Counts

We preface our observations on this point by noting the fact that this is a priority proceeding, the sole purpose of which is to determine whether Rion or Ault was the first inventor of certain subject matter common to their two applications. Believing such common subject matter to exist, the examiner drafted counts intended to read on such common subject matter, as disclosed in each application.

The question before us is whether the counts read on matter disclosed and claimed by Ault, not whether the counts are patentable to Ault. The examiner preliminarily decided, of course, that the subject matter of the counts was patentable to Ault before setting up the interference and adhered to that view in deciding the motions to dissolve. But that is not a conclusive determination; it is simply not a matter before us. See, for example, Patent Office Rules 258 and 259.

The burden of Rion’s argument throughout the interference and certainly throughout his briefs in this court has been that “fusion point” in this art means precisely the same thing as “softening point” as determined by an interferometer. This contention is based on the testimony of an expert witness, Dr. Friedberg, and on a book by Dr. A. I. Andrews, another expert in the field. This evidence was before the examiner in affidavit form during the motion period and it was before the board, as it is before us, a part of the record in the interference. Both tribunals decided not to be bound by it in determining the meaning of “fusion point” in this proceeding, and we think correctly so.

What we are concerned with is not the meaning of “fusion point” in the abstract or in its most technical sense but its meaning in this proceeding. If Rion’s evidence on the meaning of “fusion” conflicts with the ordinary dictionary definition of the term, which is the meaning obviously given to it by the examiner, then there is sufficient ambiguity to bring into play the rule, too well established to require citation of authority — but see Chedaker v. Lo, 50 CCPA 1556, 318 F.2d 333 (1963) — that we should interpret the term by reference to the application in which it originated. Considering that application and its history, it is clear to us that appellants themselves, and the examiners with whom they were in communication, took “fuse” and “fusion” in the ordinary dictionary sense of melting and equated melting point and fusion point. This definition, which we adopt, leads to meaningful counts, is reasonable in light of the Rion application prosecution history, and represents a justifiable effort to draw counts which define the interfering subject matter. Now, there may be some indefiniteness in the term “fusion point” because glass has no sharp melting point but just gets progressively softer with rise in temperature until it becomes fluid. In this case, however, certain things seem clear. One is that the final crystallization of the titania takes place while the frit is in a melted state on the workpiece and that both Rion and Ault wanted to conduct their nucleation or seeding heat treatment at lower temperatures. The disclosed firing or fusing temperatures on the workpiece are 1400°-1800° F. Rion’s heat treating range is 600°-1300° F. Ault’s is between 100° and 400° above the interferometer softening point, whatever that happens melting point and fusion point. This to be for a particular frit, examples being 1050° and 1100° F. Ault says “nucleation is usually about 250° F. below the point where crystallization can take place.” In drafting the counts the examiner wanted to define a range which was inclusive of the subject matter being claimed at the time by both parties and took the lower limit of “softening point” from Ault’s disclosure and the upper limit of “fusion point” from Rion’s claims. It is also clear that until the declaration of interference Rion made no attempt to give “fusion point” (or “fusion temperature” which, as we have pointed out, he also used in claims) any specific or technical meaning until he saw it to be to his advantage to try to avoid an award of priority to Ault.

Our conclusion is that as the applications now stand they disclose commpn subject matter being claimed by both parties. Ault’s heat treatment is between the softening point of the frit and the temperature at which it is fused or melted on the work. Rion’s heat treatment, while it extends to lower temperatures, may also take place in this range, giving his words their ordinary meaning. No other meaning appears from the specification. The board was correct in holding that the meaning given to the counts by the examiner should govern. It was also correct in holding that the counts read on Ault’s disclosed invention and that he can, therefore, make them.

Costs

There remains the question of taxing the cost of printing two additions to the record requested by Ault. The first consists of about 247 pages of testimony by Ault’s witnesses, predominantly on the issue of priority. Ault argues that Rion should pay for this addition in its entirety because the reasons of appeal indicated an appeal of the adverse determination of priority and, in the alternative, that Rion should at least pay for the printing of Van Dolah’s testimony because Rion relied on it in his brief.

On the first point, Rion argues that Ault should have to pay for the printing of his own priority evidence because it was known in advance that Ault would not have to rely on it because Rion did not include in the record, or in the praecipe therefor, any testimony on the question of “date” priority. On the second point, they argue that they “need not have relied on any of appellee’s [Ault’s] voluminous, and for the purposes of this appeal, useless, testimony, since the equivalency of fusion and softening point were well established by Drs. Andrews * * * and Friedberg.”

We agree with Rion on the first point but with Ault on the second. Therefore, Rion shall pay for printing Mr. Van Dolah’s testimony, but Ault is to pay for the rest of the first addition.

The second addition consists of the file history of Rion’s parent application, being about 73 pages. As is evident from this opinion, the contents of this file history are relevant here and were essential to the completion of Ault’s argument. The cost of printing it is therefore assessed against Rion.

Conclusion

Costs will be taxed as above indicated and the decision of the board awarding priority to Ault is affirmed.

Affirmed.

       It may be that the counts have too low a lower limit in “softening point” from the standpoint of patentability to Ault since his disclosure appears to be limited to a lower limit 100° F. above softening point, but we are not passing on patent-ability. This is a matter for ex parte consideration. What we are passing on here is solely priority as to common subject matter.


source: Caselaw Access Project

license: Public Domain

text:
    Application of Robert K. REMER.
    Patent Appeal No. 8976.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.
    Timothy L. Tilton, Chicago, 111., attorney of record, for appellant; Dawson, Tilton, Fallon & Lungmus, Chicago, 111., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 59-66, all of the claims remaining in application serial No. 575,266, filed August 26, 1966, entitled “Method of Treating Finely Divided Solid Particles and Products Produced Therewith.” We affirm.

The Invention

Appellant’s primary object appears to have been the production of pigments and printing inks made by adhering to very small solid particles, such as those of which clay is composed, dyes or color intermediates, one purpose being to prevent bleeding of the dyes. Another type of finely divided solid particle employed is carbon black, the coating of which with a dye improves its color in printing ink. Adhesion of the dye or other colorant to the solid particle is brought about by admixing with a cationic surfactant, defined in the application as a material which, when ionized in a solvent, has a hydrophobic lipophilic end on the positively charged cation. While not limited thereto, it is “generally noted” that the cationic surfactants include the organic amines, “for example, long chain aliphatic amines and polyamines, quaternary amine bases and salts, imidazolines, and other organic amines * * * broadly defined as those compounds which when contacted with a finely divided solid such as carbon black or ben-tonite clay provide said finely divided solid with a substantially improved receptiveness for, and ability to fixedly bond or attach with, other organic and/or inorganic substances.” In addition to coloring materials, appellant contemplates attaching to the solid particles such materials as optical brighteners, ultraviolet absorbers, and even antibiotics, antiperspirants, and deodorants.

The Claims

Claim 59 is illustrative and reads, with paragraphing added by us, as follows:

The method of forming an improved pigment by fixing a suitable colorant to finely divided solid particles, said method comprising the steps of:
dispersing finely divided solid particles selected from the group consisting of clay minerals and oxides, carbonates, sulfates and silicates of aluminum, barium, calcium, magnesium, silicon, titanium and zirconium in a liquid medium in which said solid particles are insoluble, said liquid medium being present in an amount sufficient to enable the formation of a suspension of said finely divided solid particles in said liquid medium, mechanically agitating said finely divided solid particles and liquid medium to uniformly distribute and suspend said solid particles in said liquid medium,
adding an effective amount of a cationic surfactant to said suspension, adding an effective amount of a colorant selected from the group consisting of natural dyes, synthetic dyes and color intermediates to said suspension, said effective amounts of said cationic surfactant and colorant respectively being amounts which are sufficient to coat substantially the entire surface area of said finely divided solid particles,
mechanically agitating said suspension to uniformly contact said finely divided solid particles with said cationic surfactant and colorant, and fixing said cationic surfactant and colorant to said finely divided solid particles.

Claims 60-63 depend from claim 59 and appellant says that their patentability can be resolved by considering only claim 59.

Claim 64 is directed to an improved pigment product comprising particles from the same group as in claim 59, “having affixed thereto a cationic surfactant and a colorant selected from the group consisting of natural dyes and synthetic dyes.”

Claim 65 is to a method of bonding an optical brightener or UY light absorber onto a pigment particle, the method steps corresponding to those in claim 59 except that the particles are more broadly claimed as “finely divided pigment particles” and the “fixing” is done “by adjusting the pH.”

Claim 66 is directed to a pigment composition comprising finely divided particles coated with a cationic surfactant and an optical brightener or an ultraviolet light absorber.

The Rejection

The following two references are relied on:

Ratcliffe 2,622,987 Dec. 23, 1952
Balón et al. 2,755,202 July 17, 1956

According to the examiner, the basic difference between the invention claimed and the disclosure of Balón et al. resides in the sequence of adding the materials. He said:

For example, Appellant treats the clay with a cationic material and then adds the coloring agent; whereas Balón et al treats the coloring agent with a cationic material and then adds the clay.
The overall result is the same.
However, treating the clay with the cationic material and then the coloring agent is known, as taught by Rat-cliffe.
* * -x-
Claims 60 to 64 differ from claim 59 in scope only.
* * . * Although not identical to the ones disclosed by Appellant, Balón et al use oxidizing agents or other special agents. Oxidizing agents are known to be optical brighteners (claims 65 and 66).

Accordingly, the examiner rejected all claims as obvious within the meaning of 35 U.S.C. § 103.

In affirming the § 103 rejection, the board stated that “It would be obvious in view of Ratcliffe to disperse finely divided solids in a liquid vehicle, to add a cationic surfactant and thereafter to add a colorant or pigment.” The board added that “it would be obvious to employ the same process to coat clay particles with a brightening agent or a UV absorber” since they “are normally considered as adjuvants in the dyeing and printing field”; and that the “addition of metal salts such as aluminum chloride to a dyeing bath as a fixing agent would be obvious to one skilled in this art.” Noting that “Balón et al. teach the combination of leuco base dyestuffs with cationic agents, including organic amine surfactants,” the board stated that “It would be obvious to substitute a leuco base dye in the Ratcliffe process with provision for subsequent development of the color using an oxidizing agent and an acidic material as the color producing reagent in the manner taught by Balón et al.”

There was also a rejection by the examiner under 35 U.S.C. § 112 on several grounds, affirmed by the board on only one ground, namely, double inclusion of elements in naming the finely divided solid material which the examiner thought rendered the claims vulnerable under § 112, second paragraph, on the ground of indefiniteness.

OPINION

In view of our affirmance on the § 103 rejection we find it unnecessary to consider the § 112 rejection.

As to the § 103 rejection, appellant emphasizes in his brief, as he does throughout his specification, that the essential feature of his invention is the utilization of a cationic surfactant for fixing colorant to solid particles. In spite of excessive loquaciousness in claim 59, that is essentially its subject matter; clay particles are made into a slurry, a cationic surfactant and a colorant are added and stirred, and the colorant adheres to the solid particles because of the action of the surfactant. Unlike appellant’s specification, which sets forth in considerable detail, including 23 specific examples, many printing ink and dye formulations to illustrate the adhering of the colorants to the solid particles, claim 59 is directed to the broadest aspect of the process of causing adhesion by use of a surfactant.

Appellant is compelled to admit in his brief that the Ratcliffe reference discloses, in a printing ink or paint composition, in combination, clay treated “with a cationic base, including amines and quaternary ammonium compounds, which would be classed as cationic surfactants.” This “modified clay” is admittedly used “in conventional paints and inks.” These, of course, contain colorants. Appellant argues that “the reference does not suggest that the cationic modified clay interacts with any pigment or other colorant that is present in the completed paint or ink.” The Patent Office position, on the other hand, is that Ratcliffe specifies that his paint or ink may contain “organic toners and dyes, carbon black, bone black” and that its presence would obviously and inherently result in a coating or bonding of the modified clay with the colorant. Further, the Patent Office contends, relative to claims 65 and 66, that “Just as a dye would be expected to coat surfactant modified clay, so would a brightening agent or a UV absorber be expected to do the same for the modified clay with or without colorant.” Appellant’s brief concedes that brightening agents and UV absorbers were previously known in this art.

It thus appears clearly to us that the combinations of ingredients comprehended by appellant’s product claims are found in the prior art and, assuming the validity of his theories of operation, the surfactants will inherently cause adhesion of the colorants to the "finely divided solid particles” coated therewith and bring about the advantages he claims for his invention. With respect to the method claims (59-63 and 65), we agree with the board that they do not present anything unobvious in their various limitations as to adding, agitating, fixing, and relative amounts. As to the order of adding surfactant, colorant, and solid particles, appellant himself points out in his Examples 16, 19, and 23 that he gets the same results when adding the dye to the slurry before, simultaneously with, or after the addition of the surfactant. As to “fixing,” this is claimed, in claims 60 and 65, as done “by adjusting the pH.” In the specification it is shown that this is done by adding acid to basic solutions and base to acidic mixtures; it is also shown that in some mixtures nothing whatever has to be done — fixing is automatic. The board thought the manipulations would be obvious and appellant has not argued this point. As to amount, the claims say using enough solid particles to make a suspension, “effective” amounts of surfactant and colorant, and sufficient colorant to coat substantially the entire surface areas of the particles. We agree that unobviousness cannot be predicated on these limitations. Given the desire to coat the particles it would be obvious to use enough for the purpose.

We have fully considered appellant’s arguments but they do not persuade us of error in the rejection of all claims under § 103 on the references and that rejection is therefore affirmed.

Affirmed.

      . Stated to be a continuation-in-part of application serial No. 536,564, filed March 14, 1966, entitled “Lignin-Based Colorants and Products Produced Therewith.”

      . Appellant’s disclosure is of particle sizes in the 20 to 80 millimicron range for carbon black particles and “around 50 microns or below” for clay minerals but the claims are not so limited. A micron is a thousandth of a millimeter and a millimicron is a thousandth of a micron.


text:
    Application of Bruno F. LUDOVICI and Gerhard K. Megla.
    Patent Appeal No. 8900.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.

      Walter S. Zebrowski, Big Flats, N. Y., attorney of record, for appellants; William J. Simmons, Jr., Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Joseph F. Nakamura, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 8 and 18-26 of appellants’ application serial No. 677,185, filed October 23, 1967, for an “Optical Information Storage and Display Device.” We affirm.

The Rejection and the Issue

Claims 18-26 are rejected under 35 U.S.C. § 102 as being fully met, or anticipated, by U. S. Patent No. 3,400,214, issued to Hamann September 3, 1968, on an application filed August 26, 1964. Claim 8 is essentially rejected under 35 U.S.C. § 103 as obvious over Hamann in view of conventional knowledge as shown by Siegmund.

The issue, which arises from the unique facts surrounding the prosecution of the Hamann reference, is the availability of the Hamann patent as a reference. Appellants contend that Ha-mann is not available as of its filing date because its disclosure did not enable a person skilled in the art to practice their invention.

The Invention

The invention is an optical information storage and display device comprising a cathode ray tube having a photo-chromic fiber optic faceplate on which data can be written by appropriate modulation and deflection of the electron beam and from which data may be either read directly or projected. The faceplate is made up of numerous individual fiber elements, each having a core of photoehromic glass. The photochromic core glass becomes more or less transparent depending upon the wavelength of the light v/hich is radiated from a phosphor layer disposed on the inside surface of the faceplate.

The Facts and the Decision of the Board

Appellants’ claims 18-26 were copied from the Hamann reference for the purpose of provoking an interference. Claim 8 is an original claim with appellants, but they concede that the claim “does not differ substantially in scope” from the other claims.

Appellants have studied the prosecution history of the Hamann patent and have found that all of the claims thereof were originally rejected by the examiner under 35 U.S.C. § 112 as being based upon an insufficient disclosure in that Hamann’s specification did not adequately describe the photoehromic fiber optic faceplate or teach how it could be fabricated. Since the interpretation of the rejection by the Hamann examiner and Hamann’s response thereto is basic to our decision, we include them here.

The Hamann examiner, in an official action dated December 1, 1967, stated the following about the § 112 rejection and grounds therefor:

The Examiner objects to the specification as insufficient. The construction and fabrication of the optical fibers which contain photoehromic material is not clear. No optical fibers of this type are known to the Examiner. A statement such as “The optical fibers contain photoehromic material . . .” does not comply with 35 U.S.C. § 112 which requires the specification to describe the intention “. . .in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, ... to make/and use the same. . . . ” The “light pipes” containing photoehromic material are a critical material limitation in the claims. Applicant’s attention is directed to Rule 118 regarding new matter.
Claims 1-13 are rejected under 35 U.S.C. § 112 as being based upon an insufficient disclosure, as per the comments, supra.

By an amendment dated February 29, 1968, Hamann responded to the above rejection and amended page 2 of his specification to include the following sentence, which ultimately appeared in the specification of his patent:

With regard to the construction and fabrication of optical fibers which have photoehromic properties, reference may be made to the article by D. S. Stookey entitled “Some Unusual Properties of Microcrystals in Glass,” Scientific American, March, 1964.

In his accompanying “Remarks” Ha-mann included the following three paragraphs directed to the § 112 rejection and his amendment to the specification:

With regard to the objection to applicant’s Specification as insufficient under 35 U.S.C. § 112 in that the construction and fabrication of the optical fibers which contain photoehromic material is not clearly set forth therein, applicant has now inserted in the Specification a reference to a well-known publication dated prior to the filing date of the present application and disclosing particularly advantageous properties of silver halide mi-crocrystals in glass, whieh publication clearly indicates that photoehromic glass was known prior to the filing of the present application.
* * -X- -X- * -X-
Since the construction of optical fibers was well-known, the construction of faceplates from fibers was well-known, and the manufacture of glass having photoehromic properties was well-known before the filing date of the present application, the only additional information required “to enable a person skilled in the art to make and use the same” is the teaching for combination of these elements and techniques into a useful system or device. This combination is, of course, applicant’s invention as clearly set forth in the present application.
Since the reference now inserted on Page 2 of applicant’s Specification eliminates any question as to how pho-tochromic glass may be manufactured for purposes of constructing the present invention, it is respectfully submitted that applicant’s Specification is now clear and definite and in full compliance with 35 U.S.C. § 112.

Apparently the examiner then allowed all of the claims.

Appellants have submitted two affidavits of D. S. Stookey, named as the author of the purported Scientific American article incorporated by reference into the Hamann specification, which establish that no such article appeared in the March 1964 Scientific American and further that Stookey knew of no publication dated prior to February 29, 1968, the date of the amendment to the Hamann specification, which teaches the construction and fabrication of optical fibers having photoehromic properties. In addition, appellants submitted an affidavit of one Araujo to the same effect as the latter conclusion of Stookey.

Appellants’ position is that the amendment to the Hamann specification was intended to overcome the insufficient disclosure rejection of the claims and since the amendment purported to incorporate an article which did not exist, the § 112 rejection is in fact still valid and illustrates the failure of the Hamann reference to enable one skilled in the art to practice the invention. Appellants’ position is summarized in this quotation from their brief before the board:

It is the position of the Applicants that since the Hamann patent specification was held to be insufficient and all of the claims therein were rejected under 35 U.S.C. § 112 as being based upon an insufficient disclosure, and since the Hamann specification was amended to refer to a non-existent publication in an effort to overcome said rejection, and since said insufficiency related to the construction of a fiber optic plate, a component which is indispensable to the use of the Ha-mann patent as a reference against the claims in this application, the effective filing date of the Hamann patent is not prior to the filing date of the present application, and therefore the rejection of the claims in this application based on the Hamann patent should be withdrawn.

The board, noting that “Appellants have established that no such article appeared on that date and that Stookey knew of no publication dated prior to February 29, 1968 which teaches the construction and fabrication of optical fibers having photoehromic properties,” rendered the following decision holding that Hamann is “available as a reference” as of its filing date:

On the basis of the above, the addition to the specification neither added to, nor detracted from the original disclosure. However, it is quite evident from the arguments accompanying the above amendment that Ha-mann was arguing that, in view of the knowledge in the art, it would have been obvious how to make light pipes containing photoehromic material. Quite obviously this satisfied the examiner as he passed the case to issue.
We find nothing in the ease before us which would justify a holding of invalidity of the Hamann patent by us on the basis of inadequate disclosure at the time of filing of the application which matured into patent. The only thing of any significance in this record which would tend to prove that the manner of making said light pipes or fibers would not have been obvious as of August 26, 1964 is the statement in the affidavit of Roger J. Araujo “THAT in my opinion a method of making optical fibers which retain the photochromic properties of the starting photochromic glass would not have been obvious prior to August 26, 1964.
No information is given as to the problems involved to support the af-fiant’s conclusion. His conclusion has no more probative value than the implied conclusion of Hamann, which was also under oath, that the method of making the pipes would have been obvious in view of the knowledge of the art prior to August 26, 1964. Therefore, we conclude that the Ha-mann patent is available as a reference as of August 26, 1964 for a light pipe of glass having photochromic properties. Therefore, claims 18 through 26 are fully met by Hamann. Also the examiner was correct in ruling that appellants have not complied with the requirements of Rule 204(c).
Claim 8 is met by the Hamann patent, except for the specific recitation of the relation of the indices of refraction of the components of the optical fiber. This is a conventional relationship in optical fibers as shown by the patent to Siegmund, hence it would be obvious to so make the fibers of Hamann.

Appellants’ Arguments

Appellants make several arguments to show error by the board. First, they disagree with the board’s conclusion that Hamann’s arguments can be taken as having satisfied the examiner of the obviousness of making light pipes containing photochromic material. Appellants believe that in view of the prosecution history of Hamann, it is apparent that the examiner merely took the sentence adding reference to the Scientific American article “at face value * * * and allowed the application without cheeking to ascertain the existence of the publication cited therein.”

With respect to the board’s conclusion that since the Stookey article did not exist, Hamann’s amendment “neither added to, nor detracted from the original disclosure,” appellants say only that “the misrepresentation of a material fact which resulted in the issuance of the Hamann patent cannot be ignored in a determination of the effect of that patent as a reference.” Appellants further note that they never asked the board to hold the Hamann patent invalid, as is implied by the board’s language, since, as they correctly note, the validity of a patent “generally has nothing to do with its effectiveness as a reference.”

Appellants allege, with respect to their contention that Hamann is not available as a reference under § 102(e), that there is support for them in Alexander Milburn v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), the case codified in 35 U.S.C. § 102(e). As appellants see it,

In that case the appellant had unsuccessfully argued that the Whitford patent was invalid in view of a patent to Clifford which disclosed the apparatus of the patent in suit. The Clifford patent was filed about a month before the Whitford patent and had issued about four months prior to the Whitford patent. The Supreme Court, through Justice Holmes, reversed a district court decree and the circuit Court of Appeals affirmance in favor of the appellee and determined that Clifford’s earlier disclosure to the Patent Office made it impossible for Whitford to claim the invention at a later date. Justice Holmes stated “Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon as the Patent Office did its work, although, ■ of course, amendments might be required of him before the end could be reached”. One of the bases upon which the Mil-burn decision was reached is lacking in the present situation, viz. Hamann had not done all that he could do to make his description public. Hamann had filed a disclosure which was determined by the Examiner to be incomplete, and he attempted to overcome the rejection based on 35 U.S.C. § 112 by a misrepresentation of fact. It was this misrepresentation, which consisted of a statement in the Ha-mann patent that a nonexistent publication supplied the inadequacies of the original disclosure, which resulted in the issuance and public disclosure of the Hamann application. It is submitted that the Hamann patent is lacking a material ingredient which Justice Holmes considered necessary for the use of a patent to negate the patentability of an application filed after the actual filing date of the patent. Therefore, the Hamann patent cannot be used to negate the patenta-bility of the appealed claims.

The Solicitor’s Position

The solicitor agrees with the board’s conclusion that the Hamann examiner was obviously satisfied by Hamann’s arguments to the effect that it would have been obvious how to make optical fibers containing photochromic material.

With respect to the specific question of enablement by the Hamann patent, the solicitor agrees with the board’s criticism of the Araujo affidavit and asserts that the fact that the Scientific American article did not exist has little significance “since the manufacture of glass having photochromic properties was in fact well known prior to August 26, 1964, for example, as shown by the Ceramic Industry publication * * * and the printed copy of a talk by S. D. Stookey” with the same title as the alleged Scientific American article. The Ceramic Industry article was cited by the examiner and identified as a reference relied upon in the board’s decision. The Stookey talk was cited to the board by the examiner in his Answer, but was not mentioned in the board’s opinion, and appellants, in a reply brief filed after the solicitor added a copy of the talk to the record by a Motion to Correct Diminution, challenges our right to rely upon it to supplement the disclosure of the Hamann patent. The solicitor further intimates that if the board did, as appellants assert, attach little weight to the Stookey affidavit, it was justified in so doing because “Dr. Stookey had indeed published a talk entitled ‘Some Unusual Properties of Microcrystals in Glass’ * *

OPINION

Having studied the prosecution history of the Hamann patent, we can agree with the solicitor that the “clear implication of these remarks [made by Ha-mann in the amendment dated February 29, 1968] is that the method of making light pipes containing photochromic material would have been obvious in view of information available in the art prior to the filing date of Hamann’s application.” However, what Hamann said in his remarks before the examiner is so inextricably bound up with what Ha-mann did in amending his specification to refer to the Stookey article, which appellants have shown does not in fact exist, that we believe the objective enablement of the Hamann patent as a reference against appellants’ application must be determined independently of the views of the Hamann examiner. But we do not think that the showing by appellants makes Hamann non-enabling as a matter of law, as appellants would have us hold.

Appellants’ arguments, while not directly challenging the validity of the Ha-mann reference or the sufficiency of the disclosure therein under § 112, do seem to be based greatly upon the prosecution history of the Hamann patent. We think that the emphasis here should be directed to the objective enablement of the Hamann patent as a reference against appellants’ application and away from the main thrust of appellants’ arguments which appears to be based upon the alleged misrepresentation Ha-mann made before the Patent Office and Hamann’s supposed failure to do everything he could to make the description of his invention public (the Milburn case argument). Having established the non-existence of the Scientific American article by Stookey is sufficient to require an independent consideration of the enablement of the Hamann patent as a reference. We now move to this consideration.

Appellants’ argument is epitomized by the statement in the Araujo affidavit quoted by the board: “a method of making optical fibers which retain the pho-tochromic properties of the starting pho-tochromic glass would not have been obvious prior to August 26, 1964.” That affidavit further contained the qualification of the affiant and the statement “THAT to my knowledge, there was no public information available prior to August 26, 1964 which would teach the construction and fabrication of optical fibers having photochromic properties * The board’s statement that “No information is given as to the problems involved to support the affiant’s conclusion,” is entirely accurate.

The Stookey affidavit similarly stated : “That I do not" know of any publication dated prior to February 29, 1968 which teaches the construction and fabrication of optical fibers having photo-chromic properties * * Like the Araujo affidavit, the Stookey affidavit also gives no specific reasons for his conclusion.

On the other hand, the examiner made a reasonable assertion that there would be no distinction between the manufacture of ordinary light-conducting fibers, admittedly in the prior art, and the light-conducting fibers of photochromic glass used in the invention. The examiner cited, among other things, the Ceramic Industry Magazine article by Stookey which is entitled “How Micro-crystals Work in Photochromic Glass,” (April, 1964), which contains the following description of the methods of forming microcrystals in glass:

Methods of Forming Microcrystals
The several methods of forming mi-crocrystals all depend on the enormous increase of viscosity as glass cools to an amorphous solid. We consider the glass as a frozen solution supersaturated with respect to one or more crystalline species. If we could suddenly inject billions of crystal nuclei into the solid glass, than [sic] slowly heat the glass to a temperature where diffusion occurs, billions of crystals could grow on these nuclei. In this way the two steps of crystallization — nucleation and growth — could be controlled independently.
In effect, this is what we have learned to do, in several possible ways. In some glasses which are homogenous liquids at the melting temperature, cooling supersaturates the melt so highly that colloidal droplets of a second liquid phase (molten salt or glass), or colloidal crystals may form at temperatures so low that the glass is too rigid for growth to occur. These can become centers of crystal growth when the glass is reheated. •* # *
By variations of these methods, it is possible to precipitate a surprising variety of kinds of submieroscopie particles, ranging from one micron down to a few Angstroms in diameter, and in concentrations from a few ppm to nearly 100 per cent crystallinity.
Some crystal compositions that have been precipitated in glass in this way are:
METALS — Au, Ag, Cu, Pt
HALIDES — Ag, Na, Ca
SULFIDES — Zn, Cd
TITANATES — Ba, Ca, Pb
ALUMINATES (SPINELS) — Mg, Zn
SILICATES — EUCRYPTITE,
LÍ2O.AI2O3.2SÍO2
SPODUMENE, Li20.Al203.5Si02
CORDIERITE, 2Mg0.2Al203.5Si02

Absent any explanation of reasons why the photochromic glass known in the prior art cannot be used to produce light-transmitting photochromic glass fibers, we agree with the Patent Office that Hamann is an enabling disclosure. The affidavits submitted by appellants are some evidence of non-enablement but in their conclusory form without identification of the problems one skilled in the art might be faced with, they do not convince us of error in the position of the Patent Office. See In re Weber, 341 F.2d 143, 52 CCPA 1015 (1965).

Appellants, instead of giving any such reasons for the inability of one skilled in the art to make the photochromic light-transmitting fibers, collaterally attack the Hamann reference and emphasize the alleged misrepresentation by Hamann of a material fact resulting in the issuance of the Hamann patent. This raises issues which are not properly considered in an ex parte proceeding where Hamann is not a party. Cf. Norton v. Curtiss, 433 F.2d 779, 57 CCPA 1384 (1970); Langer v. Kaufman, 465 F.2d 915, 59 CCPA 1261 (1972).

The rejection of claims 18-26 under § 102 upon the Hamann reference is accordingly affirmed.

Claim 8, conceded by appellants not to differ substantially in scope from the other claims, has been properly rejected under § 103, and the decision of the board on claim 8 is affirmed.

The decision of the board is affirmed.

Affirmed.

      . U. S. Patent No. 3,279,903, issued October 18, 1966.

      . Fiber optic devices are made of glass fibers. In the context of this case, “photochromic” means, according to appellants’ brief, a glass which as the property of becoming less transparent when irradiated with blue or ultraviolet light, remaining unaffected by green light, and becoming more transparent when irradiated by infra-red, red, or orange light.

      . Another short news item, entitled “Through a Glass That Darkens” did appear in that issue of Scientific American, but it is not contended to have taught more than that photoehromic glass was invented by D. S. Stookey and W. H. Armistead.

      . Stookey, “How Mierocrystals Work in Photochromic Glass,” Ceramic Industry Magazine, Apr. 1964, pp. 97-101.


text:
    Application of Frank J. NIEVELT.
    Patent Appeal No. 8975.
    United States Court of Customs and Patent Appeals.
    Aug. 30, 1973.
    L. Gaylord Hulbert, Whittemore, Hul-bert & Belknap, Detroit, Mich., attorneys of record, for appellant.
    S. Wm. Cochran, Washington, D. €., for the Commissioner of Patents. Robert D. Edmonds, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claim 11 of application serial No. 585,412, filed October 10, 1966, entitled “Roof Vent Pipe Shield” for obviousness under 35 U.S.C. § 103. Claims 1-10 of the application have been allowed. We affirm.

The invention, illustrated by the following figure of appellant’s application is a. shield which is designed to be placed over an existing roof vent pipe to protect the outer and inner surfaces and the flashing of the vent pipe:

The vent pipe 11 projects through the roof and through collar 13 of sheet metal base 14 which in turn is mounted beneath shingles 15 so as to insure a leak-proof construction. Appellant’s shield consists of an elongated outer cylinder 26 and an inner cylinder 24 connected at the top end 25 and spaced apart to provide an annular space sufficient to receive vent pipe 11. Outer cylinder 22 is of uniform diameter from the top end 25 to the line 27 where it flares outwardly to form a skirt 19. Thus the inside of vent pipe 11 is protected for a substantial distance downward from its top end and the invention forms a shield for the inside as well as the outside of the roof vent pipe 11 and for the flashing around the pipe.

Claim 11 reads:

A shield for protecting a roof vent pipe comprising an outer cylindrical sheath having its upper end inturned to form an integral inner cylinder, said outer sheath extending for a substantial lengthwise distance downwardly from the upper end with a substantially uniform outer diameter, and substantially uniform thin wall thickness, said inner cylinder extending lengthwise of said outer sheath and spaced therefrom to provide an annular space for receiving a roof vent pipe, said inner cylinder extending downwardly from said upper end for a distance substantially greater than said outer diameter of said outer cylindrical sheath, thereby protecting the vent pipe, and an outwardly flaring portion extending downwardly from said sheath.

The rejection affirmed by the board was that the invention of claim 11 was unpatentable over Elkerton in view of Blanchard.

Elkerton discloses the following “vent-pipe flashing”:

Tubular metallic member 6 has an outwardly extending portion 6a which telescopes with a top tubular member 7, the upper end of which is turned inwardly, as shown, being adapted to hook over the upper end of vent pipe 3 to prevent water from finding its way along the outside of the vent pipe.

Blanchard shows a chimney cap illustrated by the following figure:

The chimney cap includes a hollow conduit B comprising an outer shell 6 and an inner shell 7 which together form a dead air space within the chimney. The air within the space is heated by the flue gases to raise the temperature within the chimney.

The examiner thus stated his position:

Elkerton shows a shield for a roof vent pipe comprising an outer cylindrical sheath 6, 7, which, though it may be slightly tapered, is of substantially uniform outer diameter. Sheath 6, 7 has an outwardly flaring portion 6a extending downwardly therefrom, and is inturned at its upper end to form an integral inner cylinder (not numbered, see top of the Figure). Elker-ton does not specify the downward extent of his inner cylinder, and it appears from his drawing to be relatively short. However, to extend its downward reach to a distance substantially greater than the diameter of the outer sheath, as in Blanchard at 7 (Fig. 2), [3], would be obvious.

The board agreed with the “examiner’s position that Blanchard makes obvious extending the downward reach of Elkerton’s inner cylinder.” The board further stated, in response to appellant’s argument that Blanchard relates to a different art than appellant’s device:

Admittedly, the inner sleeve of this patented device is designed to perform in a different manner than appellant’s but the reference is relied upon solely for its teachings of varying the length of an inner sleeeve to increase its effectiveness. To that extent we find the patent disclosure analogous.

Appellant argues that the two references cannot be combined to support the rejection under § 103. He states:

It is quite true that individual elements of the claim are found in one or the other. But these references are concerned with such dissimilar problems that the mere knowledge of a long depending shell structure in Blanchard to absorb the heat from the hot flue gases, does not obviously suggest that there would be any advantage in Elkerton to replace the inner hook with a long depending inner cylinder. The Blanchard inner structure would be useless in Elkerton to accomplish the function for which it was intended in Blanchard’s heated chimney. The claim is unobvious over Blanchard because it recites structure outside the vent pipe which protects from top to roof line and this is not shown or suggested by Blanchard. The claim is not obvious from the combined references because there is no suggestion in either reference of any advantage in combining the outer structure of the one with the inner structure of the other. Moreover, the actual substitution of Blanchard’s hollow shell structure 6, and 7 for the hook of Elk-erton would produce an incongruous assemblage which would have no practical value whatsoever.

OPINION

We disagree with appellant that his invention is unobvious because neither reference suggests any advantage in combining the outer structure of Elker-ton with the inner structure of Blanchard or the substitution of Blanchard’s hollow shell structure for the Elkerton hook. The board noted correctly that the Blanchard reference was “relied upon solely for its teachings of varying the length of an inner sleeve to increase its effectiveness.” Combining the teachings of references does not involve an ability to combine their specific structures.

Appellant has admitted that the question here is the obviousness of replacing what he calls the hook-like structure of Elkerton with a longer inner member, as shown by Blanchard, but appellant maintains that Blanchard is concerned with such a dissimilar problem that Blanchard does not obviously suggest any advantage to such substitution. We disagree. While Blanchard’s conduit does provide a dead air space such that the air therein is to be heated by flue gases within the chimney, the individual shells 6 and 7 also obviously serve the function which appellant attributes to his inner cylinder 24, that of protecting the inside of the chimney flue. If greater protection for the inside of the vent pipe is desired, we consider it would have been obvious to one of ordinary skill in the art to extend Elkerton’s hook-like top edge downwardly, especially with the teaching of Blanchard of a long inner sleeve.

Accordingly, the decision of the board is affirmed.

Affirmed.

      . U.S. 1,202,687, issued Oct. 24, 1916.

      . U.S. 1,751,026, issued Mar. 18, 1930.


text:
    Thomas A. STANSBURY, Appellant, v. Donald S. BOND, Appellee.
    Patent Appeal No. 8902.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.

      Penrose Lucas Albright, Arlington, Va., Thomas A. Stansbury, Chicago, Ill., attorneys of record, for appellant.
    George J. Seligsohn, Princeton, N. J., attorney of record, for appellee; J. L. Whittaker, A. Russinoff, Princeton, N. J., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from ■ the decision of the Board of Patent Interferences awarding priority of invention to the senior party, Bond, on two grounds: (1) that the junior party Stansbury, had shown neither an actual reduction to practice of the invention prior to the date Bond constructively reduced the invention to practice by filing his patent application nor shown reasonable diligence from a time prior to conception of the invention by Bond, under 35 U.S.C. § 102(g); and (2) the ancillary ground that the disclosure of the invention in the Bond application supports the language of the counts. We affirm.

The Contested Subject Matter

The invention of the counts relates to what the board termed “systems for apprising airplane pilots as to whether or not they are on a hazardous course.”

The counts, which correspond to claims 63 and 58 of the Stansbury patent, are as follows (emphasis ours):

1. A computer comprising: means for determining whether the distance of a first craft from a second craft is within a preselected range by comparing the elapsed time between a signal transmitted by the second craft and a signal received from said first craft in response to said second craft signal, and means for indicating that said first craft is a navigational hazard to said second craft connected to said distance determining means for actuation when the distance of said first craft from said second craft is within the preselected range, said means requiring no other input than an input signal from said distance determining means.
2. A computer comprising: means for determining whether an altitude of a first craft is within a preselected range of the altitude of a second craft, means for determining whether the distance of said first craft from said second craft is within a preselected range, means for indicating that said first craft is a navigational hazard to said second craft connected to said altitude determining means and to said distance determining means for actuation when the altitude of said first craft is within the preselected range of the second craft altitude and the distance of said first craft from the second craft is within the preselected range.

By way of background, the Stansbury patent explains:

There are five parameters which may be utilized in determining a collision hazard. They are the relative altitudes of two aircraft, their relative courses or headings, their relative velocities, the range between them, and the bearing of one aircraft from the other. All the systems that have been proposed in the past require the utilization of a particular set of parameters selected from these five parameters to determine whether two aircraft are a collision hazard to each other. Under prior systems, every aircraft operating in the system which was expected to have the capability of avoiding another aircraft would carry equipment which required the use of each and every parameter in the preselected set of parameters to determine whether a possible collision hazard existed. * * * The present invention, on the other hand, provides for the availability'of all five parameters, but makes it possible for the equipment in any given aircraft to be designed to take advantage of only so many of the parameters as are required for that aircraft to obtain sufficient collision warning information. Thus, for the first time, a system is available wherein one aircraft can utilize up to all five parameters in estimating a collision hazard, and, therefore, make only a few deviations from its course to avoid other aircraft, while another aircraft can use only one or two of these parameters to provide it with sufficient collision hazard information to avoid all other aircraft, which it is capable of avoiding by virtue of its performance capability in relationship to the performance of the other aircraft.

The computer to which count 2 is drawn utilizes only two of these parameters, altitude and range, to provide it with sufficient navigational hazard information to avoid other aircraft. Count 1 utilizes only one parameter, distance, to provide it with sufficient navigational hazard information to avoid other aircraft.

THE ISSUE OF BOND’S RIGHT TO MAKE THE COUNTS

Stansbury’s Arguments

Stansbury moved to dissolve the interference on the ground that Bond had no right to make the counts. The motion was denied by the Primary Examiner and renewed at final hearing before the board, where it was again denied.

Stansbury asserts that the Bond application does not show support for the limitations of counts 1 and 2 that there be a “computer * * * means for indicating that said first craft is a navigational hazard to said second craft” and of count 1 of “said means requiring no other input than an input signal from said distance determining means.”

Stansbury maintains that the counts containing the limitations are “ambiguous,” or rather, in his words, “of necessity so worded that reference to the specification of the respective parties becomes necessary to ascertain the meaning of certain language therein.” Stansbury quotes the following from this court’s principal opinion in McCutchen v. Oliver, 367 F.2d 609, 611, 54 C.C.P.A. 756, 759 (1966):

One cannot arrive at an understanding of the present counts as they relate to the subject matter of the interference without something more than the counts themselves.
Admittedly verbal similarities exist between the counts and the respective disclosures of the parties. However, to stop here is to violate the spirit of 35 U.S.C. § 135 which authorizes interferences where two or more parties claim “the same subject matter.”
Thus the issue cannot be decided here in the rarified atmosphere of claim semantics. Instead, it must be decided at the down to earth level of what the parties disclosed as “the gist” of their respective inventions. Cf. Hansgirg v. Kemmer, 102 F.2d 212, 26 CCPA 937. While an “unambiguous” count may be interpreted without resort to the specification, the counts here are not of this type. Considering the wording of the counts, particularly the term “reference” surfaces, and the arguments of the parties, it is clear that different meanings are ascribed to that term by the parties when interpreting the count. When resort is had to the specifications, the latent ambiguity in the counts becomes apparent. [Emphasis ours, except “disclosed” in original.]

As to “Navigational Hazard”

The “gist of the invention,” Stansbury maintains, is, as shown by the “navigational hazard” wording which appears in both counts, read in light of his specification, which indicates that the invention is a computer for use in “navigation collision warning system” or what Stansbury calls a Collision Avoidance System (CAS). This he distinguishes from the gist of the Bond invention which he characterizes as an “aircraft proximity indicator and display system” or a “proximity warning indicator which merely warns the pilot of the proximity of a nearby craft without making a decision for him as to whether the other craft is a navigational hazard.” Thus Stansbury’s position is that the counts

* * * are clearly drawn to a computer which makes the decision of whether one craft is a hazard to the other. Bond’s structure cannot do this. Bond’s structure can merely display the relative bearing and range information either momentarily or as a continuous line or series of dots so that a human pilot or crew member can watch Bond’s display and mentally reach his own decision as to whether another craft is a navigational hazard. Thus, on this ground that the claim is drawn to a computer which makes a decision rather than to a range and bearing indicator similar to that of a radar scope, the petitioner respectfully submits that Bond cannot make the original count of the interference.

That the gist of his invention is a collision avoidance system which determines for the pilot whether there is a navigational hazard is apparent, Stans-bury maintains, from the prosecution history of claim 24 in his parent application, the predecessor of claim 58 of his patent, which count 2 duplicates. As Stansbury states in his brief:

During the prosecution of the patent application, the Examiner rejected the original filed claim 24 on Hovanne-sian et al. 3,089,139 * * [Issued May 7, 1963, on application filed May 1, 1958.] However, the applicant stated in his Amendment “A” * * * as follows:
“Claims 5, 11, 17, 24 and 25 were rejected as being obviously fully met by Hovannesian et al. Hov-annesian discloses a ‘proximity warning system’ which transmits altitude information and obtains a rough relative bearing on a transmitted signal from another craft. A collision avoidance system as specified in claims 5, 11, 17, 24 and 25 includes not only means for transmitting altitude data and means for obtaining relative bearing data in order to display such quantities of information individually as indicated in Hovannesian et al. Figure 3, but it also includes computing means for determining whether a navigational hazard exists. Since claims 5, 11, and 17 are drawn to ‘collision avoidance systems’ which include computer means, and since claims 24 and 25 are drawn to computers, it is submitted that these claims are clearly patentably distinguishable over Hovannesian et al. because no computer means of any type is disclosed therein.” [Emphasis supplied by Stansbury.]
The applicant further stated in his Amendment “C” * *“ * [after the examiner had again rejected the claims on Hovannesian et al. and stated that “no computer is positively claimed in any of the claims”] that:
“In regard to claims 24 and 25, the Examiner’s attention is respectfully invited to the preamble of these claims which is, ‘A computer comprising’. Therefore, these claims are drawn to combinations which in themselves form computers.”
The file histories of the parent and continuation application Serial No. 448,554, filed April 1, 1956, show that the original claim 24 was then allowed without further rejection by the Examiner * * *.

Stansbury’s legal basis for resort to the prosecution history of his patent, to interpret the counts and decide whether Bond has a right to make them, is this further language in McCutchen v. Oliver, supra, 367 F.2d at 616, 54 CCPA at 765:

The Patent Office removed the rejection based on prior art references and the claims, in view of Mc-Cutchen’s arguments, were allowed. Such arguments relied on by the applicant and accepted by the Patent Office to avoid prior art references should be considered in interpreting the claims. Considering the respective inventions and the McCutchen specification and file wrapper, we think the McCutchen co-planar “reference surfaces” are exposed. Oliver does not disclose such “reference surfaces.” Since we find this to be a necessary feature of the invention as defined by the counts, the decision of the board is reversed.

“Means Requiring No Other Input” Stansbury makes a similar argument with respect to -the limitation appearing in count 1 of “said [indicating] means requiring no other input than an input signal from said distance determining means.” He alleges that Bond does not support this limitation of the count, a limitation whose terms contain a latent ambiguity “which becomes apparent by resorting to the Stansbury application,” the file history of which shows that the limitation was placed in the precedessor claim to claim 63 of the Stansbury patent from which the count was copied, to distinguish, among other things, a Laka-tos et al. patent reference (No. 3,-045,231, issuéd July 17, 1962, on an application filed April 17, 1958) which “disclosed a computer which utilized both velocity and range information in making a determination.” Stansbury’s brief states:

Therefore, the file history is quite clear on the point that there must be no other information input other than that of range. * * *
* * * * * *
The party Bond has admitted that altitude and direction information are carried with the range information in his computer structure which he relies on in attempting to make the count. The limitation in the claim that there be no other information introduced other than range information is most material to the patentability of the claim. If it were not, it would be un-patentable over Lakatos et al. and other references which the Examiner could have additionally cited for rejection.

The Board’s Decision and Bond’s Position

The board determined that the Bond application supported the counts, making first the following general remarks about the arguments of Stansbury interpreting the counts in view of the prosecution history of the claims of his parent application which comprise the counts:

Stansbury presents various arguments as to why the Examiner allowed the claims corresponding to the counts in order to show that Bond has no right to make the counts. Such arguments are irrelevant because they are in fact directed to the patentability of the counts; a question which is not ancillary to priority. Ferree v. Shepard, [Shephard] Jr., et al., 155 USPQ 464, 55 CGPA 848 [384 F.2d 1019]. Since Stansbury did not choose to select limiting language which was available to him when he drew the claims (counts) he is not now in a position to insist that limitations be read into the counts for the purpose of avoiding the issue of priority. Durdin III v. Nordell, 90 USPQ 228, 1951 C.D. 506, [190 F.2d 211, 38 CCPA 1187]; Dawson v. Martin, 1940 C.D. 493.

Then the board pointed out why it believed the counts, interpreted without regard to the “irrelevant” arguments of Stansbury based upon the reasons the examiner allowed the claims corresponding to the counts, were supported by Fig. 18 of the Bond application, which we reproduce here:

The board stated:

As to count 1 Stansbury further asserts that Bond cannot make the clause — “said means requiring no other input than an input signal from said distance determining means.” He states that this clause means that the input signal cannot contain anything but range information and that Bond has additional information in his input signal.
Bonds [sic] argues conversely that the language is not exclusionary but simply means that it is sufficient for the operation that the input signal from the distance determining means contain range information and does not require absence from the input signal of all information other than range information. We are constrained to agree with Bond’s position.
In Fig. 18 of Bond, the signal which is applied to the alarm is the output of the range gate amplifier 296. No matter what other information is present it is obvious that the alarm will be operated by a prescribed range signal particularly when switch 310 is turned to complete the connection through contact 320.

In a decision on a request for reconsideration, the board made it clear that it considered the counts to be “unambiguous and broad enough to be applicable to Bond’s disclosure.”

Bond agrees with the board that the counts are unambiguous and thus answers Stansbury’s argument based upon the “gist” of the Stansbury invention with the assertion following from this court’s opinion in Hemstreet v. Rohland, 433 F.2d 1403, 58 CCPA 743 (1970), that it is not necessary to consider the gist of the invention because there is no ambiguity of the counts and therefore there is no reason to resort to the prosecution history of the Stansbury parent to constrife the counts.

OPINION

We state at the outset what we think must be the answer to the dilemma which faces the court where it is alleged that the language of a count contains a latent ambiguity. If the ambiguity is apparent from the language of the count, like a claim which is “indefinite,” then it is easy to see that the count is ambiguous, and resort to the specification is clearly permitted to determine the proper construction of the count. Where, however, a latent ambiguity is alleged to exist, a literal application of the rule that “only in the case where a count is ambiguous should resort be had to the patent where it originated” prevents the court from looking to the specification even to determine if there is an ambiguity, let alone resolve the meaning of the count for purposes of the interference. We believe, therefore, that the starting point for determining whether the specification of the patent ought to be consulted to determine the gist of the invention there described may be either an apparent ambiguity in the language of a count or the arguments of one or more of the parties which make it clear that the language of the count may have different meanings. See Smith v. Wehn, 318 F.2d 325, 50 CCPA 1544 (1963); Munch v. Peterson, 420 F.2d 758, 57 CCPA 877 (1970).

In the emphasized language of Stansbury’s quotation from McCutchen v. Oliver, it is clear that the court must consider both the “wording of counts” and the “arguments of the parties” to determine whether different meanings are ascribed to the language of the count. In Kilby v. Nelson, 418 F.2d 937, 57 CCPA 770 (1969), we considered the question of support for the language of the counts in the same context as here. The count used the word “contact.” We said, 418 F.2d at 941, 57 CCPA at 775

* * * the fact that Kilby urges that different interpretations of “contact” are applicable may properly be treated as justifying analysis from the viewpoint that ambiguity is involved. See Smith v. Wehn, 318 F.2d 325, 50 CCPA 1544 (1963). Therefore, interpretation of the counts in the light of the Nelson patent in which they originated is appropriate.

We would add to this the requirement that the different interpretations urged to support the contention of ambiguity be reasonable and certainly not clearly contradictory to the language of the count.

As to “Means Requiring No Other Input”

The limitation of count 1 which resides in the clause “said [indicating] means requiring no other input signal from said distance determining means” is urged by Stansbury to mean “there must be no other information input other than that of range.” Bond’s position is as he states in his brief, reviewing the arguments made before the board:

Stansbury’s position seems to be that this language is exclusionary and would not be supported by a system in which the input signal includes altitude data as well as distance. But the fact is that the phrase simply means that it is sufficient for the operation of the computer that the input signal from the distance determining means contain only range information, notwithstanding that the input signal may also contain other (e. g., altitude) information.
Plainly, the language in question does not require the absence from the input signal of all information other than range information. It merely makes such other information non-essential to, but permissible in, the operation of the computer defined by the count.
Before the Board, Stansbury went to great lengths, as he does here * * *, to review his file history in an effort to read an exclusionary limitation into count 1. But there is no ambiguity here and no need to resort to the file history to contrue the count.

The board agreed with Bond’s position, and, as to this limitation, so do The recitation in the count of indicating “means requiring no other input” (our emphasis) than that from the distance-determining means does not mean that no other input can exist, but only that no other input is needed, or required. Stansbury’s construction of the language of the count is unreasonable, conflicting with the plain meaning of the words alleged to be ambiguous. In such a case, Stansbury’s arguments cannot be accepted as raising an ambiguity justifying a determination of the “gist of the invention” or analysis of the specification or prosecution history of the patent in which the count originated. See Hemstreet v. Rohland, supra; Kade-mann v. Bollmann, 421 F.2d 1372, 57 CCPA 907 (1970). There being no ambiguity, we agree with the board that this language, given its plain meaning, finds ample support in the Bond application, particularly in Fig. 18 when switch 310 is in the mode completing the circuit with contact 320. Accordingly, Bond supports this limitation of count 1. we.

As to “Means for Indicating That Said Craft Is a Navigational Hazard”

Stansbury’s argument has, we think, raised an ambiguity in the meaning of these words of the count. He has pointed out that there are two reasonable meanings attributable to them, the difference hinging upon whether the computer “makes the decision of whether one craft is a hazard to the other,” or merely determines and displays the relative bearing and range information of the craft “so that a human pilot or crew member can watch * * * and mentally reach his own decision as to whether another craft is a navigational hazard.” We therefore disagree with the board’s determination that the counts are wholly unambiguous and we find it necessary to determine the meaning of the counts from the prosecution history of the Stansbury patent. Cf. Hemstreet v. Rohland, supra.

It appears from Stansbury’s patent prosecution history, the pertinent portions of which are quoted earlier in our summary of appellant’s argument, that he and the examiner understood the invention to do more than obtain and display data on nearby aircraft and to actually compute whether a navigational hazard in fact exists. This is the import of the prosecution of claim 24, the predecessor to claim 58 from which count 2 originated, when it was rejected over Hovannesian et al.

Now, does the Bond application describe the invention of the counts to give Bond the right to make the counts? We think it does. This is not because Bond’s application refers to “collision warning system” for indicating a “collision hazard,” but because the Bond application shows a recognition of and disclosure of means for computing and determining when aircraft are on a collision course. In the Bond application we find this discussion of an object of the invention (emphasis supplied):

Another object of this invention is to provide an improved collision warning system which includes means for indicating in one aircraft when other aircraft in the vicinity are at or near the same altitude, and/or are on a collision heading, and/or are moving from one altitude layer to another at which there may be a collision hazard.

Bond’s application describes a modified form of the invention including (emphasis supplied),

* * * a transponder on all aircraft and an interrogator on fully equipped aircraft. If a transmitting aircraft A is within a given range of a fully equipped aircraft B, the former’s transponder signal passes through a first gated amplifier on aircraft B. If, at the same time, aircraft A is on a collision course with aircraft B, the first amplifier output signal passes through a second gated amplifier on aircraft B. The output of the second gated amplifier actuates a load circuit such as an alarm or indicator.

This modified system is illustrated in fig. 18, supra, and is described as providing “Automatic means * * * for eliminating from consideration those aircraft not on collision courses.” Gated amplifier 296 is controlled by a range gate circuit 298 and the cam arrangement at 300. The specification continues with a description of the operation of the circuitry schematically shown in Fig. 18:

If the return signals are from an aircraft A within the range interval of interest, two pulses appear at lead 302. These are applied to a pulse code selector circuit 303 which is controlled by barometric altimeter 304. The circuit is so arranged that when the aircraft A from which the pulses are received are within a given altitude increment ± AH/2 of aircraft B, plus code selector 303 produces an output pulse 306 which appears at terminal 308. When switch 310 has its arm connected to terminal 308 and a signal appears there, alarm 314 is actuated and the signal is also applied to the control grid 316 of indicator 318. Alternatively, if it is desired to indicate all aircraft within the range gate interval, arm 310 may be connected to terminal 320, thereby by-passing the pulse code selector.

Indicator 318 is a “direct view type storage tube” and Bond’s Fig. 19 shows a typical display associated with the system of Fig. 18:

Bond’s specification says that in this figure, “the aircraft are shown as spaced dots. Two aircraft are shown, one at 326 and the other at 328. It is apparent that the aircraft at 326 is not a collision threat as it will pass to starboard. However, the aircraft indicated by dots 328 is on a collision course and evasive maneuvers should be taken.” The description continues with the following paragraph referring to the Fig. 18 diagram and the display shown in Fig. 19:

The display of Figure 19 indicates all aircraft within a given altitude increment AH/2 of aircraft B, regardless of whether or not they are on collision courses. However, if desired, means may be provided for discriminating against those aircraft such as 326 not on collision courses. Such a unit is shown in Figure 18 by the dashed block 329. It may be a storage device of the type illustrated in [previous figures] * * *. Preferably, the storage unit is arranged to be connected in circuit only when switch 310 is connected to terminal 308. A switch 330 is shown for this purpose. It may be ganged to switch 310 (the ganged connection is not shown on the drawing).

We believe that the Bond disclosure describes the invention of the counts construed in light of the prosecution history of the Stansbury patent. We cannot agree with Stansbury’s appraisal that “Bond’s structure can merely display the relative bearing and range information either momentarily or as a continuous line or series of dots so that a human pilot or crew member can watch Bond’s display and mentally reach his own decision as to whether another craft is a navigational hazard.” Clearly the opposite is the import of the description of the circuit of Fig. 18 where gated amplifier 296 (range information controlled) and impulse code selector (altimeter information controlled) control alarm 314 and indicator 318 and where means such as storage unit 329 is provided for discriminating against aircraft not on collision courses.

Stansbury argues to the effect that the Bond disclosure is the same as that of the Hovannesian et al. patent which he distinguished from in the prosecution of the predecessor to claim 58 of his patent by his arguments emphasizing the “computing means for determining whether a navigational hazard exists.” Stansbury further speculates that “even if the Bond disclosure had been in the form of a patent that could be cited by the Examiner during the prosecution of the Stansbury applications, the Examiner would have allowed claim 58 over the Bond disclosure.” We have considered the Stansbury invention in the context of the prosecution history involving the Hovannesian reference and have considered the teachings of the Bond disclosure to determine if the Bond invention is that of the counts construed in light of this prosecution history, but we will not get involved in directly comparing Bond’s disclosure with the Hovannesian patent or treating the Bond application as a reference against the Stansbury patent.

The decision of the board on Bond’s right to make the counts is affirmed.

THE PRIORITY ISSUE

The board found that the entire record on behalf of Stansbury was substantially as set forth by its summary of the facts, which follows:

Stansbury avers that he conceived the subject matter involved between June 1946 and March 10, 1947 when he filed an application which became patent No. 2,568,568 (Stansbury exhibit 1). He does not, however, indicate where the concept of the counts in issue is to be found in patent 2,568,568 and we have been unable to find it in that patent.
Stansbury further avers that he purchased two APN-1 radar altimeters which were available as surplus “immediately subsequent” to World War II. Photographs of these altimeters are in the record as exhibits 3 and 4. As to these exhibits Stansbury states * *:
“Neither one of these radar altimeters were modified to specifically encompass the subject matter of the two counts of this interference.”
Stansbury exhibit 5 is stated to be the first written document which has been preserved. He states that this document was prepared prior to March 1, 1956 * * *. It is not apparent from the record how this date has been established (exhibit 5 is undated and has no designation of authorship) .
Stansbury further avers that “ * * * models of * * * structures to which the claims of United States Patent 3,310,806 are drawn [were] made * * * between 1947 and * * * April 11, 1963.” The record indicates that whatever models had been made were either lost or dismantled * * *. Additionally it is averred that — “Laboratory models which simulated the RF transmission portion were completed prior to 1960.”

Upon this record the board found, inter alia, that there was “no convincing evidence that an actual reduction to practice including test's showing successful operation of the subject matter of the counts was ever achieved.” The board noted that the undated document represented as Exhibit 5 appeared to be merely a theoretical analysis of various possible solutions and it was unable to discern how it supported the conception of the invention of the counts and that Stansbury had “not pointed out how he believes the counts are supported by this document.”

Stansbury, apparently submitting the whole issue of priority to the court on the record, says that the points of error by the board are clear from the record. We fail to find them, either in the record summary in the board’s opinion or in the record as a whole, including the deposition of Stansbury. Accordingly, the decision of the board awarding priority of invention to Bond is affirmed.

The decision of the board awarding priority of invention to Bond and holding that the Bond application supports the counts is affirmed.

Affirmed.

      . Donald S. Bond, involved on application serial No. 663,778, filed June 5, 1957, assigned to KCA Corporation.

      . Thomas A. Stansbury, involved on patent No. 3,310,806, issued March 21, 1967, on application serial No. 448,554, filed April 1, 1965, as a continuation of application serial No. 272,396, filed April 11, 1963.

      . Since the Hovannesian et al. patent was filed after the Bond application, it would not have been a reference against Bond’s application, so he would not have had to meet the limitation we are talking of here. It is not unfair to consider the manner in which Hovannesian et al. was distinguished by Stansbury because we are only considering it in the context of the ancillary ground of Bond’s right to make the count. The determination on ancillary grounds would not subject Bond to rejection on the ground of interference estoppel, etc. See MPEP, § 1109.02 and Patent Office Buie 257 (b).

      . Hovannesian would not have been a reference against the Bond application. (See footnote 3.)