Hunt v. Treppschuh

MILLER, Judge.

This appeal is from that part of the decision of the Board of Patent Interferences, which involves appellant Hunt’s continuation-in-part 1 of an earlier filed parent application 2 and the patent 3 of appellees Treppschuh et al., awarding priority of invention with respect to count 7 to the patentees. 4 The sole question is whether count 7 is supported in Hunt’s parent application, which is relied on as a constructive reduction to practice. The answer depends on whether the parent application includes a disclosure of an embodiment within the count that meets the requirements of the first paragraph of 35 U.S.C. § 112 . Swain v. Crittendon, 332 F.2d 820 , 51 CCPA 1459 (1964). We reverse.

The Invention

The invention relates to a process of purifying metals and alloys, especially steels, by heating under very low pressure. The very low pressure induces the vaporization of volatile impurities. Volatile alloying ingredients, such as manganese in steel, also vaporize when heated under very low pressure. The vaporized alloying materials are replaced during a subsequent heating step. Sufficient pressure is thereafter maintained on the melt to prevent further vaporization of alloying ingredients.

The Count

Hunt copied count 7 from the Treppschuh et al. patent into his pending continuation-in-part application. The count reads as follows:

7. A method of refining metals, especially steel and alloys which includes the steps of: in a vacuum purely electron heating the melt to be refined for eliminating volatilizable impurities and subsequently stopping the said electron heating and subjecting the thus treated melt to a heating at least partially by ion beams.

This count is directed to the method of the invention in which heating under very low pressure is accomplished by first using purely electron beams, and subsequently by using at least partially ion beams.

The Board

The board found that this count describes a batch process as carried out in Figures 1 and 2 of the Treppschuh et al. patent and held that the count was not supported in Hunt’s parent application. It reasoned that the step of stopping the electron heating requires that the electron beam means actually be turned off and that ion beams thereafter be employed to continue the heating of the same melt. It said that the step of “stopping the said electron heating” is a positive step in the process of the count, which is not present in a continuous process in which the molten metal merely flows through a furnace heated in a first section (purely) by electron beams and in a second section by ion beams; that to include such a continuous process in the count would result in an undue stretching of the language of the count beyond its clear meaning. (It is undisputed that the process disclosed in Hunt’s parent application is a continuous process and not a batch process.)

OPINION

We do not agree with the reasoning of the board and are of the opinion that the *1388 circumstances here require that the term “stopping” should be given the broadest interpretation it will reasonably support. Buck v. Desvignes, 489 F.2d 737 , (CCPA 1973); Henderson v. Grables, 339 F.2d 465 , 52 CCPA 920 (1964). We do not see why “stopping the said electron heating” cannot be read on a continuous process in which the molten metal flows through a furnace which is heated in a first section purely by electron beams and in a second section at least partially by ion beams. Treppschuh et al. have not shown us it cannot, and we can perceive no error in the statement of the examiner: “By removing the melt the electron heating is stopped.”

However, although we do not agree with the reason given by the Board of Patent Interferences in support-of its decision with respect to count 7, our inquiry cannot end there. Our jurisdiction requires that we review decisions of the board and not merely its opinions. 35 U.S.C. §§ 141 , 144. We must still, determine whether the invention of count 7 is disclosed in Hunt’s parent application. This application discloses a preferred structure of a continuous zone vacuum furnace that includes a high vacuum purification chamber including at least two adjacent hearth pots. A baffle permits molten material to flow between the pots, but effectively divides the purification chamber into a first vacuum stage and a second vacuum stage. Varied temperature conditions may be established within the respective hearth pots through the provision of separately controlled bombardment heating sources directing beams of charged particles into the melt contained within the respective hearth pots. The application states that the bombardment sources may be of various types depending upon the pressures required within the vacuum stages of the purification chamber. The only heating means expressly disclosed for high vacuum use are electron and ion beams. (“Where high vacuums are involved, the sources are commonly provided as electron or ion guns.”)

In Smith v. Horne, 450 F.2d 1401 , 59 CCPA 712 (1971), this court held that the following disclosure was sufficient under 35 U.S.C. § 112 to support a count drawn to a method for polymerizing a monomer involving the use of titanium tetraiodide as a component of a catalyst: “One or more chlorides of titanium or zirconium, the chlorides and iodides being preferred.

The tetrahalides are specially preferred.” The working example actually described a catalyst prepared from titanium tetrachloride. The above disclosure was held to be an express teaching of titanium tetraiodide, 5 notwithstanding the contention that the disclosure did not recognize the criticality of selecting titanium tetraiodide compared to the other “specially preferred” catalyst components. The court reasoned that the advantages of using titanium tetraiodide were not significantly related to the sufficiency of the disclosure relied upon for support, because the advantages were not recited in the count.

In this case, as in Smith v. Horne, four species are immediately apparent in the disclosure relied upon for support. 6 Although Hunt’s parent application does not recognize the criticality 7 of the one *1389 species of heating means — purely electron beams in the first chamber and ion beams (at least partially) in the second chamber — required by the count, it need not do so, because the advantages of using that species are not recited in, nor are they apparent from, the count and are not, therefore, significantly related to the sufficiency of the disclosure of Hunt’s parent application. Count 7 is broad enough to read on the features (“high vacuum for purifying the melt” in the first step and “operation at higher pressures so that highly volatile alloying constituents can safely be added” in the second step) disclosed (but not claimed) in the Treppschuh et al. patent specification, wherein the selection of heating means is critical; and it is also broad enough to read on the process disclosed in Hunt’s parent application, wherein the selection of heating means is not critical. One of ordinary skill in the art of metal refining could be expected to, without undue experimentation, arrive at the use of electron beams in the first chamber and ion beams in the second chamber using the disclosure in Hunt’s parent application. Just as the disclosure of four specially preferred catalyst components in Smith v. Horne was sufficient to describe the one recited in the count, so the disclosure of four combinations (species) of heating means in Hunt’s parent application is sufficient to describe the one recited in the count. There is no requirement that the party copying a claim have the same enabling disclosure as that supporting the copied claim.

There does not appear to be any material distinction between this case and Smith v. Horne. While here the contested limitation relates to the specific heating means employed in the process disclosed in Hunt’s parent application and recited in the count, the dispute in Smith v. Horne was over the specific catalyst component employed in the process of the count. In our opinion this is a distinction without a difference. In both cases a limited class of only four possible species for use in the process of the count is disclosed without preference for the one claimed. 8 See Snitzer v. Etzel, 465 F.2d 899 (CCPA 1972).

Another distinction is that Hunt’s parent application is relied upon as a prior constructive reduction to practice; whereas in Smith v. Horne the disclosure was relied upon for a right to make the count. In the latter situation the requirements of the first paragraph of 35 U.S.C. § 112 must be satisfied for the full scope of the count. In the former, however, the § 112, first paragraph requirements need only be met for an embodiment within the count. The difference lies in the fact that a count is a vehicle for contesting priority and may not necessarily be allowable to a winning party or be proper under § 112 (e. g. a phantom count). Hedgewick v. Akers, 497 F.2d 905 , 909 n. 6, (CCPA 1974). The distinction between right to make and prior constructive reduction to practice is not material here because, as in Smith v. Horne, the count is drawn to a species rather than to a genus.

In view of the foregoing, we hold that count 7 is supported in Hunt’s parent application. Having risked using broad language to claim their invention, Treppschuh et al. must bear the consequence that Hunt’s parent application supports that language with a variation of their specific embodiment. Hemstreet v. Rohland, 433 F.2d 1403, 1406 , 58 CCPA 743, 747 (1970).

We have considered appellant’s motion, and appellees’ memorandum in opposition thereto, to apportion the costs of printing certain material included in the transcript of record at appellees’ request. Pursuant to Rule 5.6(c) of the rules of this court we find the material was properly included. Appellant’s motion is therefore denied.

*1390 The decision of the board with respect to count 7 is reversed.

Reversed.

. Serial No. 477,357 filed July 27, 1965, for an “Electron Beam Furnace.”

. Serial No. 255,625 filed February 1, 1963, for an “Improved High Vacuum Furnace for Continuous Zone Processing.”

. U. S. Patent No. 3,342,250 issued September 19, 1967 on an application filed November 9, 1964 and claiming a convention date of November 8, 1963, for a “Method of and Apparatus for Vacuum Melting and Teeming Steel and Steel-Like Alloys.”

. Priority of invention was decided with respect to nine counts, but only the decision with respect to count 7 has been appealed.

. One of the four “specially preferred” tetra-halides: titanium tetrachloride, titanium tetraiodide, zirconium tetrachloride, and zirconium tetraiodide. Thus, to use the words of the dissenting opinion here, there was an “alternative, don’t-care, use-what-you-like kind of disclosure,” which expressed no preference for any of the four species.

. Electron-electron, electron-ion, ion-ion, and ion-electron heating means. These four spe- ‘ cies clearly appear from the express disclosure of ion or electron beam heating in two successive chambers.

. The Treppschuh et al. patent specification (not the count) discloses that first a melting with electron beams is carried out to obtain the benefit of high vacuum for purifying the melt, and thereafter heating is by high pres-' sure corpuscular beams, which include ion beams, which permits operation at higher pressures so that highly volatile alloying constituents can safely be added.

. In re Smith, 458 F.2d 1389 , 59 CCPA 1025 (1972), relied on by the dissenting opinion, was cited by neither party here and is clearly distinguishable. The disclosure relied upon there for support for a claim to a subgenus encompassed an infinite number of subgenera.