.

On the record of this case, the determination of the question of inopera tiveness is unnecessary to a decision on the question of priority of invention. 3. PATENTS-INTERFERENCE-MOTION TO STRIKE BRIEFS

Prior to the oral argument appellant entered a motion to strike certain portions of the brief of appellee. While there may be some doubt whether the record justified the matter complained of, it was found to be wholly immaterial to the decision of the court and was accordingly ignored. In view of such immateriality the motion is denied.

4. PATENTS APPEAL IN ERROR-DIMINUTION OF RECORD

Certiorari issued at the instance of appellee to bring before the court certain matters alleged to have been a part of record of the case before the tribunals of the Patent Office. The allegation proves to have been correct and the costs incident to the action will be taxed against the appellant. United States Court of Customs and Patent Appeals, March 22, 1937 Appeal from Patent Office, Interference No. 54,016

[Affirmed.]

Pennie, Davis, Marvin & Edmonds (Edmund G. Borden, Frank E. Barrows, Louis D. Forward, Clarence M. Fisher, R. F. Adams, and L. D. Forward of counsel) for appellant.

Charles M. Thomas for appellee.

[Oral argument January 4, 1937, by Mr. Barrows and Mr. Thomas]

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

There is here brought to us for review a decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority of invention to Dubbs upon the three counts of an interference declared, at his solicitation, between his application and a patent to Coast.

The counts are for a process of treating hydrocarbon oil of a heavy character for the production of gasoline therefrom. Count 2 is typical and the same is quoted, the particular feature at issue being italicized:

2. The herein described method of treating hydrocarbon oil which consists in subjecting a body of oil to heat and pressure to release vapors from the oil, drawing off the heavier oil from the first body of oil and holding it under pressure, reducing the pressure on said heavier oil to effect the distillation of a portion of said oil, then cooling the distilled portion of the oil to liquefy the same, and then returning the resultant liquid to the main body of oil for retreatment.

Dubbs is the senior party. His application, Serial No. 240,913, was filed June 20, 1918, and he relies upon this date for conception

and reduction to practice. The application of Coast was filed July 14, 1919, and matured into patent No. 1,585,233, issued May 18, 1926. Dubbs copied the claims which became the counts on May 25, 1926, and in due time the interference was declared.

In the brief on behalf of Coast is the following statement:

No testimony has been taken by Dubbs on the question of priority. Coast took testimony on the question of priority; but Coast does not rely, on this appeal, on any earlier date of invention than his filing date. Accordingly, the only question presented on this appeal is whether the Dubbs application as filed constitutes sufficient evidence of conception, disclosure, and constructive reduction to practice of the issue by Dubbs to establish the fact of invention by Dubbs.

The proceedings in the controversy following the declaration of interference have been as follows: Coast at a proper time moved to dissolve upon the ground, broadly, that the Dubbs application did not disclose the invention, the allegation particularly emphasized being that Dubbs "does not disclose the drawing off of heavy oil from a pressure cracking system and holding it under pressure and reducing the pressure to effect distillation." Also, it was alleged, with reasons offered in support of the allegation, that the disclosure of the Dubbs application is inoperative, particularly "in respects which preclude the carrying out of the process of the interference issue in accordance with the construction and operation described and illustrated in the Dubbs application." The motion to dissolve was overruled by the Law Examiner in a decision wherein the matters of disclosure, inherency and inoperativeness were quite fully discussed. Coast filed a petition for rehearing which was denied, the denial being accompanied by written decision. He then proceeded to take testimony and an elaborate record was made up. Upon that record the Examiner of Interferences rendered a decision in which the testimony was reviewed in extenso, and all the material issues, embracing the matter of inherency and disclosure, and a number of highly technical questions relating to operativeness were discussed and decided. A petition for rehearing seems then to have been filed and denied by the Examiner of Interferences. The Board of Appeals concurred with the Examiner of Interferences on all the issues, both of law and fact, and affirmed the decision. awarding priority to Dubbs. The instant appeal to this court was then taken.

Much of the evidence presented on behalf of Coast related to the question of priority, he having attempted to establish conception and reduction to practice prior to Dubbs' filing date. Under the statement quoted, supra, from the brief of appellant, this issue is not before us and need receive no further notice.

The remainder of the material evidence introduced on behalf of appellant relates to the question of inherency, as hereinafter explained, and, in connection therewith, the alleged inoperativeness of the Dubbs device in particulars later to be described.

Dubbs introduced evidence devoted principally to the question of operativeness.

* *

The several issues, as the case is presented to us, relate to the question of the inherency in the Dubbs device of that feature of the counts expressed in count 2, supra, by the clause reading, "reducing the pressure on said heavier oil to effect the distillation of a portion of said oil." Within this general question of inherency as the case unfolds itself is involved the subsidiary question of inoperativeness. Disclosure as to all other features of the counts. is practically conceded by Coast. It is not conceded on the part of Dubbs that the above feature was not described in his specification as filed, it being pointed out that the specification makes reference to a "fractionating still 33 * which operates at atmospheric pressure." The insistence on the part of Dubbs is that in any event the step is inherent in the operation of his device, in consequence of which inherency his disclosure, including the expression as to atmospheric pressure, is sufficient to support his right to make the count. This insistence was sustained successively by the Law Examiner, the Examiner of Interferences and the Board of Appeals, the last two of those tribunals (the only ones having occasion to pass upon this particular question) holding that the burden of proof rested upon Coast as the junior party to establish the inoperativeness and lack of inherence which was alleged as to the Dubbs disclosure.

In its decision the board said:

In the Dubbs process, if the step of "reducing the pressure on said heavier oil to effect the distillation of a portion of said oil" is inherent in his process as described, he has a disclosure which supports his right to make this feature of the counts even though there is no description thereof.

The authorities cited by the board in this connection are: Briggs et al. v. Kaisling, 53 App. D. C. 49, 288 Fed. 254, 1923 C. D. 186; Ellis v. Shaw, 54 App. D. C. 185, 295 Fed. 1006, 1924 C. D. 230, and Lovejoy v. Shultz, 58 App. D. C. 190, 26 F. (2d) 562, 1928 C. D. 180.

Upon this point Coast contends, first, that it was an error of law to hold that the burden of proof rested upon him and, second, that, assuming such burden did rest upon him, he met the same by a preponderance of the evidence. His own statement of these issues, and summaries of his contentions thereon, appear in his brief as follows (the italics being quoted):

1. Where the question presented is the right of the party Dubbs to make the claims copied from the patent of the party Coast for purposes of interference, and where an essential feature of the counts is not described in the Dubbs application as filed and it is not possible to ascertain with certainty from the face of the Dubbs application whether the undescribed feature is inherent in the normal operation of that which is described, is the burden of proof on Dubbs to prove that the undescribed feature is inherent in the disclosure of his application, or is the burden of proof on Coast to prove that this undescribed feature is not inherent?

This issue raises a fundamental question of law, having to do with the burden of proof.

Appellant contends that the burden of proof is on Dubbs to establish the fact that he made the invention and disclosed it in his application; and not on Coast to prove that he did not; that the decisions of the Examiner of Interferences and of the Board of Appeals involve a fundamental error of law on this question of burden of proof; and that, on the findings of fact which these decisions contain, priority of invention should have been awarded to Coast.

2. Does the evidence show that the subject matter in controversy is necessarily inherent in the disclosure of the Dubbs application, or does it show that the subject matter in controversy is not necessarily inherent in such disclosure, such that the party having the burden of proof has maintained that burden by a preponderance of the evidence?

Appellant contends that a preponderance of the evidence clearly shows that the subject matter in issue is not necessarily inherent in the Dubbs disclosure; and that Dubbs accordingly has no right to make the claims, and that priority of invention should be awarded to Coast.

It may be said that throughout the voluminous record and in the briefs of the respective parties, the feature at issue is usually referred to as "flashing," a term which seems to be well understood in the oil cracking and distilling art as meaning the effecting of distillation by reduction of pressure upon the oil (or a part thereof) being treated at a certain stage of its passage through the cracking and distilling systems. The term "flashing," however, is not used in the specification or in the claims of either the Coast patent or the Dubbs application.

It may be said further at this point that both the Examiner of Interferences and the board make reference to prior proceedings in the Patent Office relating to the Dubbs disclosure. One such proceeding was ex parte on the part of Dubbs and one an interference proceeding between Dubbs and one Clark, to which Coast was not a party. In those proceedings it was held, in effect, that the flashing feature was inherent in the Dubbs disclosure. While, as of course, there was no holding by the tribunals of the Patent Office that these prior adjudications were binding as res adjudicata in this proceeding, it was held, being especially emphasized by the Examiner of Interferences, that those prior decisions are entitled to "considerable weight," and, in his words, "must be considered as controlling in the

absence of evidence showing a contrary state of facts." The Examiner of Interferences referred to In re Manson, 45 App. D. C. 563, 1917 C. D. 152, and John P. Minton et al. v. Adolph A. Thomas, 18 C. C. P. A. (Patents) 1153, 48 F. (2d) 425, 1931 C. D. 374, saying that those cases "are not believed authority for rendering a decision to the contrary without the support of testimony."

[1] Obviously, the first question which we should determine, in view of the record in the case, is the legal question as to the burden of proof relative to inherency, and inoperativeness as it bears upon inherency, raised by appellant's assignment that it was error to hold that the burden rested upon him to show lack of inherency. Among the authorities cited as supporting appellant's contention upon this point are Cooper v. Downing, 45 App. D. C. 345, Lindley v. Shepherd, 58 App. D. C. 31, 24 F. (2d) 606, and Steenstrup v. Morton, 58 App. D. C. 343, 30 F. (2d) 867. These authorities we have carefully examined, and, in our opinion, they fail to sustain appellant's position.

In the Cooper v. Downing case, supra, the claims were for a structure and, so far as we can discern, no question of "inherency" such as is presented in the instant case was there involved. In that case the counts related to a car end made up in a particular manner. The Law Examiner sustained a motion to dissolve on the ground that Downing, who appears to have been the senior party, "in the light of his application and disclosure, was not entitled to make the claims.” The board reversed the decision, saying:

While we do not gather from the original papers that the construction was intended to be such as is required by the issue, it is readily conceivable that those skilled in the art, guided by their special knowledge regarding the pressing of iron plates, would know that Downing's car would naturally be built in such a way that it would necessarily satisfy the issue.

The case was appealed to the commissioner, as at that time was the common practice, and he sustained the board. He refused to hear evidence as to what was intended by Downing's original application and disclosure, holding that it was the duty of the experts of the Patent Office to determine for themselves what an application discloses. This the court approved, but it reversed the commissioner's decision upon the merits, saying:

We are not convinced that Downing's application so clearly explains the principle here involved that any person skilled in the art would be led by his disclosure to construct a car end according to the claims of the issue.

So, the court disagreed with the board and the commissioner upon the question of fact, not as to inherency, which was not in terms involved, but as to the probable deductions or actions of those skilled in the art.