Hunt v. Treppschuh

RICH, Judge,

dissenting, with whom

MARKEY, C. J., joins.

While I agree with the majority that the reasoning of the board was wrong, 1 I respectfully disagree with the conclusion that Hunt’s parent application discloses the invention of count 7 and with the reasoning on which that conclusion is based.

My disagreement involves two matters: First, the way the majority goes about finding in Hunt’s parent application something that is not there — which the majority opinion tacitly admits is not there; and, second, its misconstruction and misapplication of our decision in Smith v. Horne, 450 F.2d 1401 , 59 CCPA 712 (1971), which involved a fact situation not at all comparable to the facts here. I shall discuss these matters separately.

Hunt’s Parent Does Not Disclose Count 7

Count 7 defines an invention consisting of a sequence of three steps, but the critical part of it for the purposes of decision is the specific limitation that the first step is vacuum melting by “purely electron heating.” The heating must be by electron heating and by electron heating alone. Nowhere does Hunt’s parent teach this concept. One skilled in the art reading Hunt’s parent will never learn the invention of count 7, which is a “must” invention, not a “may” invention. The heating in step one must be by electron heating.

The majority tacitly admits that Hunt’s parent does not disclose the invention. It says (footnote omitted):

* * * Hunt’s parent application does not recognize the criticality of the one species of heating means — purely electron beams in the first chamber * * * required by the count * *.

The “criticality” is the essence of the invention of count 7. If Hunt did not recognize it, how could he disclose it, how can others find out about it by reading his parent application, and how can that application be either support for the count or a constructive reduction to practice of a process within the count?

What the majority does is to construct a fictitious situation. As it states, according to the disclosure of the Hunt parent application “the bombardment sources may be of various types, depending upon the pressures * * *. ‘Where high vacuums are involved, the sources are commonly provided as electron or ion guns.’ ” (My emphasis.) The majority then takes this vague, alternative, don’t-care, use-what-you-like kind of disclosure of various heating means and, by 20/20 hindsight, itself creates out of all the various possibilities, none of which is specifically taught or disclosed or conveyed to one skilled in the art by Hunt as a must, four “species,” as set forth in footnote 6, in order to be able to make a forced and false comparison with the facts in Smith v. Horne, which did involve an express disclosure of chemical species. Hunt’s parent does not disclose any such “species.” The majority then itself selects one of these undisclosed “species” of its own creation and holds that it is an “embodiment” of the invention of count 7, necessitating an award of priority to Hunt — who admittedly did “not recognize the criticality of the one species,” as does the majority. (My emphasis.) Priority should not be awarded to one who did not even recognize the invention.

The majority’s reference to “the disclosure of four combinations of heating means (species) in Hunt’s parent application” is a reference to its own creation, not to anything Hunt disclosed. Hunt does not mention the necessity of using any particular sequence of steps (and count 7 calls for a specific sequence) and he does not mention the necessity of using electron beam heating in the first *1391 step (and count 7 requires therein electron beam heating). Hunt teaches away from any such necessity by his express disclosure that the heating can alternatively be by the common practice of using electron or ion guns with high vacuum. Count 7 permits of no such alternatives. As the majority recognizes in calling it a “species,” it is specific.

In effect, Hunt’s parent application hands the majority (and the art) the equivalent of a child’s Erector Set and the majority, having knowledge of the Treppschuh et al. disclosure and the requirements of count 7, finding all the necessary parts present, proceeds to construct the count, along with three other inventions. But a box of girders, nuts, and bolts with instructions to use them any way one likes is not a disclosure of any particular structure, no matter how many species can be constructed.

This aspect of the case involves a simple question of fact — what is disclosed— and no abstruse question of patent law. The only law involved is that the burden is on the party copying a claim from a patent to establish that he has support for it in his application. Smith v. Wehn, 318 F.2d 325 , 50 CCPA 1544 (1963). Hunt has not sustained that burden as to his parent application.

Smith v. Horne is Not a Case in Point

The majority bases its decision on Smith v. Horne, supra, as if it were on all fours with the present case. By showing that the Hunt parent application does not, as a matter of fact, disclose the invention of count 7, I have really made unnecessary a discussion of Smith v. Horne or any other case in which we have found, as a matter of fact, that there is a disclosure. However, the majority seems to see some analogy with the facts in Smith v. Horne which compels me to conclude that they fail to see the possibly subtle but nonetheless fundamental distinction between the two fact situations. If the cited case stands for what the majority is making it stand for here, it was wrongly decided and should be overruled as misleading to the examining corps. 2 Finding disclosures in parent applications which are not there can lead to the issuance of many invalid patents because such findings can be used to antedate references. The significance of the majority decision here is not limited to interferences. I will therefore point out how this case differs from Smith v. Horne.

Preliminarily, I am unable to understand why the majority focuses so intently on this single case, involving a fact situation hardly comparable to that before us. We have subsequently given much closer attention to the problem, suggesting “a more stringent requirement,” pointing out that this field of the law is one which must be left to ease-by-case development. For instance, see Judge Lane’s elaborate discussion — apparently forgotten — in a case decided 6 months after Smith v. Horne, in which we held the appellant could not rely on the filing date of an earlier application, even partially overruling what we said in In re Risse, 378 F.2d 948 , 54 CCPA 1495 (1967), one of the cases relied on by appellant in Smith v. Horne. I refer to In re Smith, 458 F.2d 1389 , 59 CCPA 1025 (1972), particularly part I of the opinion. In re Smith, does not leave Smith v. Horne, as a precedent of any importance. Smith v. Horne was still fresh in our minds when we decided In re Smith, yet the latter does not even mention the former.

Smith v. Horne (so denominated) was a three-party interference involving *1392 Smith and Horne and Slocombe applications. The two appellees had similar disclosures but the court reasoned out the issue of right to make on the basis of the Slocombe application. The invention was a polymerization method utilizing a catalyst of two components, one of which was titanium tetraiodide, TÍI4. Polymerization is a one-step reaction, not a combination of steps as in the present case. The question was whether Slocombe and Horne disclosed such a catalyst, with specific reference to the TÍI4 component. The board and this court both held that they did. There was no issue involving the other materials used in the reaction other than the TÍI4 component of the catalyst. Slocombe’s disclosure was that he preferred to use chlorides and iodides of titanium or zirconium and also preferred tetrahalides; the one working example disclosed TÍCI4. The board held, and the court agreed, that the disclosed alternative of using iodides in place of chlorides would teach one skilled in the art to use TÍI4 and that there was support for the count and consequent right to make it. This kind of disclosure is not comparable to the nondisclosure here where Hunt’s parent application expresses indifference as to the heating means used in the first step, no preference at all as to any kind of heating anywhere in the three-step process, contains no indication of the necessity for using electron beams in the first step, and where such failure of preference collides with the count 7 limitation to “purely” electron beam heating. Smith v. Horne involved the application of a stated test, which the court found in Prutton v. Full er, note 2, supra, namely, “whether the application would fairly suggest to the skilled worker in the art the particular [invention] claimed, or whether the desirability of that composition could be ascertained only by extensive experimentation.” The specific example taught TÍCI4 and taught possible substitution of iodine for chlorine (a recognized usual equivalency), or the use of Til4. This is a far cry, factually, from anything before us now. There is no analogy between this case and Smith v. Horne and the majority errs in finding one through the device of inventing four “species” for Hunt of which he disclosed no appreciation.

The basic error in the majority opinion is, in my opinion, the finding of Hunt’s non-existent “disclosure of four combinations of heating means,” from which it is reasoned that he thereby disclosed the one critical combination.

Finally, I note that appellant Hunt never cited Smith v. Horne, nor did appellees. Perhaps they appreciated how irrelevant it is.

For the above reasons, I would affirm.

. This discussion is irrelevant to the decision and superfluous.

. The way the majority interprets Smith v. Home is, in my view, contrary to this court’s decision in Prutton v. Fuller, 230 F.2d 459, 463 , 43 CCPA 831, 835-36 (1956). The court there said:

It is clear, however, that when an applicant recites two or more lists of ingredients and indicates that any one in one list may be combined with any one in another, he is not necessarily entitled to claim any specific combination of elements which may fall within the scope of such a disclosure, and we have so held. [Authorities cited.]

Smith v. Home, incidentally states the same burden of proof as in Smith v. Wehn, supra.