MALCOLM KENT SMITH, APPELLANT,
v.
FRANK WESLEY LANE, APPELLEE
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The court held that the appellant's experiments did not meet the limitations of the patent counts, and therefore did not establish a reduction to practice of the invention.
Appellant Smith appealed a decision awarding priority of invention to appellee Lane in a patent interference proceeding. Smith claimed his 1946 experi…
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It is to be further noted that count 2 recites “contacting the resulting solid mass with steam superheated to at least 200° C. at substantially atmospheric pressure to effect pyrolysis thereof.” We are in agreement with the board that there was no showing from the experiments that Smith ever contacted the solid mass with pyrolyzing steam, since, as stated above, there is no showing that Smith’s mixture was solid prior to or during pyrolysis.
Count 2, in our opinion, clearly recites that the steam effects the pyrolysis of the solid mass. Appellant has shown by testimony in his behalf that a certain amount of steam was generated in situ in his externally heated reaction vessel, and he contends that since the counts do not specify the source of the steam, the generation of steam in situ meets the counts. In this respect appellant states: “ ‘Contacting’ can be effected by means of in situ formed steam as well as by charged steam.” There is no doubt that steam formed in situ in the reaction vessel “contacts” the mixture. However, we are in full agreement with the board that it has not been shown by appellant that his steam, and not the externally applied heat, effects the pyrolysis. As stated by the board, “It could well be that pyrolysis * * * was due to the application of external heat and that the resultant steam had little if any effect insofar as pyrolysis was concerned.” Thus, since the count clearly calls for contacting the solid mass with steam to effect pyrolysis thereof, and since the experiments relied on by appellant do not clearly indicate to us that it was the steam and not the external heat which effected the pyrolysis, we are of the opinion that appellant’s experiments do not clearly indicate a reduction to practice of the subject matter of the counts.
In order to obtain priority in an interference between a patent and a subsequently filed application, the applicant must prove priority beyond a reasonable doubt. Kruger v. Resnick, 197 F. 2d 348, 39 C.C.P.A., Patents, 994. However, in the present case it has not been established that the appellant ever actually reduced to practice the same invention defined in the counts. There is. no need, therefore, to review the testimony relating to priority to determine’ whether appellant has met his burden.
For the foregoing reasons, the decision appealed from is affirmed.
Affirmed.
JACKSON, Judge, retired, recalled to-participate.
O’CONNELL and COLE, Judges, because of illness, did not participate in the hearing or decision of this case.
Cases With Similar Vibessemantic neighbors from the corpus
Citator
Authorities Cited
- Martin v. Friendly, 58 F.2d 421 (C.C.P.A. 1932)
- Kruger v. Resnick, 197 F.2d 348 (C.C.P.A. 1952)
- De Benneville v. Anderson, 212 F.2d 612 (C.C.P.A. 1954)
- Simpson v. Neracher, 191 F.2d 416 (C.C.P.A. 1951)