Appendix — Meitzner v. Mindick

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APPENDIX

Final Hearing Paper No. 118

February 26, 1975 FEM/dlr

Apr. 11, 1975

BOARD OF PATENT INTERFERENCES

IN THE UNITED STATES

PATENT AND TRADEMARK OFFICE

BEFORE THE

BOARD OF PATENT INTERFERENCES

Patent Interference No. 97,787

MEITZNER et al. v. MINDICK et al.

Production of Ion Exchange Resin Particles

Application of Erich Meitzner and James A. Oline filed

July 18, 1958, Serial No. 749,526.

Patent granted Morris Mindick and Jerry J. Svarz, De-

cember 22, 1970, Patent No. 3,549,562 on Serial No.

463,923 filed June 14, 1965. Accorded benefit of Ser.

No. 691,541 filed October 22, 1957.

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Messrs. Christen and Sabol; Bergin, Quinn, Meyers,

Simmons, Doherty and Neruda for Meitzner et al. Oral

argament by Eugene Sabol.

Messrs. Johnston, Root, O’Keeffe, Keil, Thompson and

Shurtleff; Griswold, Burdick, and Whale for Mindick

et al. Oral argument by Herbert B. Keil.

Modance, McKelvey and Calvert, Examiners of In-

terferences

McKelvey, Examiner of Interferences

This interference involves (1) an application ' of Erich

Meitzner and James A. Oline (Meitzner), the junior

party and assignors to Rohm and Haas Company, and

(2) a patent* issued to Morris Mindick and Jerry J.

Svarz (Mindick), the senior party and assignors to Dow

Chemical Company.

Both parties filed briefs and appeared, through counsel,

at final hearing.

The Counts

The inventions defined by the ten counts of this inter-

ference relate to:

(1) a method of making “raw beads” which can be

converted to ion exchange resins (count 1 through 6) ;

(2) a method of making ion exchange resins from

raw beads (counts 7 and 8) ;

1 Application, Serial No. 749,526, filed July 18, 1958.

?U.S. patent 3,549,562, issued December 22, 1970, based on appli-

cation, Serial No. 463,923, filed June 14, 1965, as a continuation of

application, Serial No. 691,541, filed October 22, 1957 (now aban-

doned).

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(3) raw beads capable of being formed into ion ex-

change resins (count 9) ; and

(4) ion exchange resins made from raw beads (count

10).

Counts 1 and 5 are representative and read:

Count 1 \

A process for producing copolymers of increased

porosity which comprises:

(A) dissolving from 50 to 88% by weight of a

monovinyl aromatic monomer and from 12 to 50%

of a polyvinyl aromatic monomer in an inert organic

liquid which is a solvent for the monomers but is a

nonsolvent for the polymerized product of the mono-

vinyl and polyvinyl monomers, said solvent being

present in an amount of about 30 to 70% by weight

based on the weight of solution ;

(B) incorporating said solution into an excess of

water to form a dispersion of droplets; and

(C) copolymerizing said monovinyl and said poly-

vinyl monomers while suspended in said aqueous

medium and and in the presence of said inert or-

ganic liquid.

Count 5

A process for producing solid vinylaromatic copoly-

mer beads suitable for preparation of ion-exchange

resin beads characterized by increased purosity and

reduced swelling and shrinkage in use which com-

prises:

(A) dissolving a monovinyl aromatic monomer

and a polyvinyl aromatic monomer in an inert or-

ganic liquid which is a solvent for the monomers

but is a nonsolvent for the polymerized product of

the monoviny! and polyvinyl monomers, said solvent

being present in an amount of about 30 to 70% by

weight based on the weight of solution;

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(B) suspending the monomer solution as dispersed

droplets in an aqueous dispersion medium ; and

(C) copolymerizing said monomers in aqueous dis-

persion to form solid copolymer beads which upon

chlo¥omethylation to give an average of from 0.75

to 1.5 chloromethyl groups per aromatic nucleus and

subsequent amination with trimethylamine yield

trimethyl quaternary ammonium anion-exchange

resins characterized in chloride form by:

(1) a water holding capacity of from 40 to 65

weight percent ; and

(2) a volume éxpansion on conversion into hy-

droxide form of less than 30 percent.

Unresolved Matters Deferred to Final Hearing

1. Motion by Meitzner for Leave to Amend Prelimi-

nary Statement

On March 15, 1973, Meitzner filed a motion (Paper

No. 34) for leave to amend his preliminary statements.

Citing Forsberg v. Bradbury, 1912 C.D. 89 (Comm’r.

Pat. 1912), the Patent Interference Examiner deferred

a ruling on the motion to final hearing ‘Paper No. 37).

A ruling on the motion requires background knowledge

on the nature of the invention defined by the counts.

With reference to count 1, the invention relates to a

method of making raw beads in which a monoviny]

aromatic monomer and a polyvinyl aromatic monomer

are dissolved “in an inert organic liquid which is a sol-

vent for the monomers but is a nonsolvent for the. . .”

raw beads. The solvent as defined in the counts, is broad

enough to read on the use of both “swelling” solvents,

such as toluene, and “non-swelling’” solvents, such as

tertiary amyl alcohol.

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Meitzner took testimony with the apparent intention

of proving conception and actual reduction to practice of

the invention defined by the counts on the basis of work

with both swelling and non-swelling solvents. Reference

to the mentioned testimony appears in Meitzner’s briefs.

At the oral hearing of this case, however, counsel for

Meitzner repress ited to this Board that Meitzner no

longer would ic!y on priority proofs related to the use

of swelling solvents. Instead Meitzner now intends to rely

solely on priority proofs related to the use of non-swelling

agents, specifically work involving the use of tertiary

amy] alcohol which took place in 1957.

In his motion, Meitzner seeks to amend his prelimi-

nary statement to allege events which occurred prior to

1957. In view of counsel’s representation at the oral

hearing to the effect that only work which occurred in

1957 would be relied upon, Meitzner’s motion for leave to

amend his preliminary statement has become moot. Ac-

cordingly, the motion is dismissed as moot.

2. Motions by Meitzner for Leave to Add Documents

Upon Which He Intends to Rely

On September 24, 1973, Meitzner filed a “third” mo-

tion for leave to add documents upon which he intends

to rely (Paper No. 56). The Patent Interference Ex-

aminer deferred a ruling on this motion to final hearing

(Paper No. 57).

On October 29, 1973, Meitzner filed a “fourth” motion

for leave to add documents upon which he intends to rely

(Paper No. 61). On February 1, 1974, the Board en-

tered an order deferring a ruling on the motion to final

hearing (Paper No. 72).

According to the “third” motion;

. on August 17, 1973, it was learned .. . that

certain of the ... raw beads... prepared... in

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1955 and 1956 would have the characteristics out-

lined near the end of counts 5 through 10, if such

. . . [raw beads] were chloromethylated and ami-

nated in the manner designated in said counts.”

Inasmuch as Meitzner no longer relies on work per-

formed in 1955 and 1956, Meitzner’s “third” motion for

leave to add documents upon which he intends to rely

is dismissed as moot.

According to the “fourth” motion:

“During . . . testimony on September 18, 1973, .. .

Barrett described his characterizing tests that had

been performed [in October, 1973] .. . on raw

beads and ion exchange resins reproduced in accord-

ance with 1955 work . . . utilizing Butarez as an

organic liquid in the copolymerization of styrene and

divinylbenzene. The characterization work was nec-

essary . . . to establish the properties of the raw

bead and resulting ion exchange resin As specified

in... counts 5 through 10.” hy

Again, since Meitzner no longer relies on work per-

formed in 1955, Meitzner’s “fourth” motion for leave to

add documents upon which he intends to rely is dismissed

as moot.

Mindick Motion for Judgment on the Record

On October 10, 1973, Mindick filed a motion to dis-

solve and/or for judgment on the record (Paper No. 59).

On February 1, 1974, the Board entered an order deny-

ing the motion, noting:

“fajny argument as to what the record shows may be

presented in the briefs at final hearing” (Paper No. 72).

The parties have briefed and argued Mindick’s motion for

judgment on the record at final hearing.

Meitzner lost an interference ‘No. 92,816) in which

the sole count was directed to a method of making raw

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beads having a sponge-like porosity. One step of the

method defined by that count* called for dissolving

styrene and divinyl benzene in an “inert organic liquid

. Selected from the group consisting of an inert

aliphatic oxygen-containing solvent and an inert aliphatic

hydrocarbon solvent ....”* Meitzner v. Corte, 56 CCPA

1099, 410 F.2d 433, 161 USPQ 599 (1969).

According to Mindick, it is questionable whether

Meitzner’s application describes a process in which swel-

ling solvents, such as toluene, may be used to make raw

beads. During the testimony period, Mindick believes

he was able to obtain an admission from Dr. Harold

E. Weaver, an employee of Rohm and Haas Company, to

the effect that at the time the Meitzner application was

prepared Rohm and Haas Company deliberately intended

to exclude any description concerning the use of toluene

from the Meitzner application. Based on this admission,

Mindick alleges that:

(1) Meitzner has no “standing” in this interference

to contest priority of a generic invention directed to the

use of both swelling and non-swelling solvents, because

(i) he lost an interference on the use of non-swelling

solvents and (ii) he “abandoned” the invention with re-

spect to the use of swelling solvents, and

(2) a generic claim directed to the use of both swelling

and non-swelling solvents is not patentable to Meitzner,

because Meitzner discloses only the use of non-swelling

solvents [35 U.S.C. § 112, first paragraph}.

We hold that Mindick is not entitled to prevail on the

issue of priority on the basis of his motion for judgment

on the record.

The breadth of a count determines the extent of the

available priority proofs with respect to that count. Thus,

* The count is reproduced at 161 USPQ 600, column 2.

* According to Mindick, these solvents are non-swelling solvents.

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the mere fact Meitzner was unable to prove priority of a

non-swelling subgenus on the basis of tertiary amy!

alcohol vis-a-vis Corte does not prevent Meitzner from

attempting to prove priority of a swelling/non-swelling

genus on the basis of tertiary amyl alcohol vis-a-vis

Mindick. Stated in other terms, the fact that Corte is

the first inventor of the non-swelling subgenus in no way

proves Mindick is the first inventor of the swelling/non-

swelling genus vis-a-vis Meitzner.

Mindick’s allegations based on undue breadth «and

“abandonment” due to Meitzner’s alleged failure to dis-

close the use of swelling solvents are arguments to the

effect that Meiizner’s specification is not broad enough

to support claims drawn to use of both swelling and

non-swelling solvents. The question of undue breadth is

not ancillary to priority. Fried v. Murray, 46 CCPA 914,

268 F.2d 223, 122 USPQ 361 (1959); Den Beste v. Mar-

tin, 45 CCPA 798, 252 F.2d 302, 1116 USPQ 584 (1958).

Moreover, with respect to “abandonment,” we note that

Meitzner no longer seeks to prove priority on the basis

of swelling solvents and Mindick does not allege that

Meitzner “abandoned” any invention based on the use of

non-swelling solvents.

Mindick Motion to Dissolve Based on 35 U.S.C. 135(b)

After the decision on motions in this interference,

Mindick moved to dissolve with respect to counts 5

through 10 (Paper No. 33). According to Mindick,

Meitzner did not make claims 51 through 56, which cor-

respond to counts 5 to 10, within the one year period of

section 135(b). On March 29, 1973, the Patent Inter-

ference Examiner dismissed the motion, because it was

“belated” and was “not accompanied by a verified show-

ing of facts to excuse” the belatedness (Paper No. 37).

37 C.F.R. 1.258(a) provides:

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“A party shall not be entitled to raise {an issue of]

nonpatentability unless he has duly presented a mo-

tion for dissolution under § 1.231 upon such ground

or shows good reason ... why such a motion was

not presented; however, to prevent manifest injustice

the Board . . . may in its discretion consider a

matter of this character even though it was not

raised by motion... .”

Mindick has not shown good cause for his not having

presented the motion timely. Nor do wé find any mani-

fest injustice since it is not clear to us that Meitzner was

not claiming substantially the same invention as defined

by Mindick’s patent claims within one year from the

date the Mindick patent issued. Accordingly, Mindick’s

motion to dissolve based on section 135(b) provides no

basis for awarding priority to Mindick.

Mindick Motion to Dissolve on the Ground

of Junior Party Estoppel

I. Finding of Fact with Respect to the

Estoppel Issue

1. On May 15, 1962, Interference No. 92,815 was

declared involving four parties:

(i) Millar,

(ii) Meitzner, on the basis of the application in-

volved in the present interference.

(iii) Corte, and

(iv) Mindick, on the basis of the parent of the

application which matured into the involved Min-

dick patent.

2. When Interference No. 92,815 was declared, Min-

dick was the senior party.

3. The sole count in Interference No. 92,815 reads:

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“A process for producing ion exchange resin par-

ticles of increased porosity which process comprises:

A. Dissolving a major amount of styrene and a minor

amount of divinyl benzene in an inert hydrocarbon

solvent, said solvent being present in an amount of

about 50 percent by weight based on the weight of

solution ;

B. Incorporating said solution into an excess of water

to form a dispersion of droplets;

C. Popolymerizing said styrene and said divinyl

benzene while suspended in said aqueous medium and

in the presence of said inert hydrocarbon;

D. Chloromethylating the formed copolymer;

E. Reacting the chloromethylated copolymer with

a tertiary amine to form said ion exchange resin par-

ticles.”

4. During the motion period, Mindick moved to sub-

stitute Proposed Count A (92,815, Paper No. 11). Pro-

posed Count A reads:

“A process for producing ion exchange resin par-

ticles of increased porosity which process comprises:

A. Dissolving a major amount of styrene and a

minor amount of benzene in an inert organic com-

pound which is a solvent for the monomers but is

a nonsolvent for the polymerized product of styrene

and divinyl benzene, said solvent being present in an

amount of abcut 50 percent by weight based on the

weight of solution;

B. Incorporating said solution into an excess of

water to form a dispersion of droplets; and

C. Copolymerizing said styrene and said divinyl

benzene while suspended in said aqueous medium and

in the presence of said inert organic compound.”

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Meitzner opposed Mindick’s motion, inter alia, on the

ground that Proposed Count A was unpatentable over the

prior art (92,815, Paper No. 28, p.12).

5. Meitzner moved to dissolve the interference (92,815,

Paper No. 16), inter alia, on the ground the count was

unpatentable over the prior art. Meitzner also moved to

substitute a Proposed Count 1, contingent on the denial

of his motion to dissolve (92,815, Paper No. 12). Mindick

opposed Meitzner’s motion to dissolve (92,815, Paper No.

27 p. 10).

6. Corte moved for the benefit of a German application

and to shift the burden of proof contingent on the inter-

ference not being dissolved. (92,815, Paper No. 13).

7. On November 22, 1963 a judgment was entered

against Millar (92,815, Paper No. 21).

8. On February 14, 1964, the Primary Examiner en-

tered his decision on motions (92,815, Paper No. 29).

Meitzner’s motion to dissolve based on unpatentability of

the count was granted. The granting of this motion ren-

dered moot Meitzner’s contingent motion to substitute

Proposed Count 1. Mindick’s motion to substitute Pro-

posed Count A was denied, because the Primary Ex-

aminer held the proposed count unpatentable. Corte’s

motion for benefit and to shift the burden of proof was

granted.

9. Mindick requested reconsideration (92,815, Paper

No. 35) arguing the count was patentable over the prior

art. Meitzner opposed (92,815, Paper No. 36) and con-

tinued to argue the count was unpatentable over the prior

art. On reconsideration, the Primary Examiner adhered

to his views that the count was unpatentable (92,815,

Paper No. 38). The Primary Examiner also refused to

vacate his decision granting Corte’s motion for benefit

and to shift the burden of proof and Interference No.

92,815 was dissolved.

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10. After the dissolution of Interference No. 92,815,

Mindick abandoned his application and filed a continua-

tion thereof—the continuation is the application which

matured into the involved Mindick patent.

11. Claim 1 of the Mindick continuation, as filed,

reads:

“A process for producing ion exchange resin particles

of increased porosity which comprises:

A. Dissolving from 50 to 88% by weight of a mono-

vinyl aromatic monomer and from 12 to 50% of a

polyvinyl aromatic monomer in an inert organic com-

pound which is a solvent for the monomers but is a

nonsolvent for the polymerized produce of the mono-

vinyl and polyvinyl monomers, said solvent being

present in an amount of about 30 to 70% by weight

based on the weight of solution;

B. Incorporating said solution into an excess of

water to form a dispersion of droplets; and

C. Copolymerizing said monoviny! and said poly-

vinyl monomers while suspended in said aqueous me-

dium and in the presence of said inert organic com-

pound.”

12. During the prosecution, the Primary Examiner

rejected four claims, including claim 1, supra, and al-

lowed six other claims. In due course, Mindick appealed to

the Board of Appeals, where a decision was entered on

December 28, 1966, reversing the Primary Examiner’s re-

jection of the above mentioned four claims.

13. On March 29, 1968, a second interference, No. 96,-

314, was declared involving:

(i) Meitzner, on the basis of the application in-

volved in the present interference,

(ii) Corte, and

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(iii) Mindick, on the basis of the application

which matured into the involved Mindick patent.

14. When Interference 96,314 was declared, Mindick

was the senior party.

15. The sole phantom count in Interference 96,314

reds:

“A process for the production of a copolymer of an

aromatic vinyl monomer and an aromatic polyvinyl

monomer which comprises

(1) dissolving from about 50-96% by weight of a

monovinyl aromatic monomer and from about 0.5 to

50% by weight of a polyvinyl aromatic monomer in

a inert organic liquid which is a solvent for the

monomers but is a non-solvent for the polymerized

product of the monovinyl and polyvinyl monomers

said solvent being present in an amount of 20-300%

by weight based on the weight of monomers;

(2) incorporating the resulting solution into an

excess of water to form a dispersion of droplets;

and

(3) copolymerizing said monovinyl and said poly-

vinyl monomers while suspended in said aqueous

medium in the presence of said inert organic liquid,

the weight percent of monoviny] and polyvinyl mono-

mers being based on the total weight of said mono-

mers.”

16. During the motion period, Meitzner filed a motion

to dissolve the interference, inter alia, on the ground the

count was unpatentable over the prior art (96,314, Paper

No. 16). Meitzner also moved to substitute Proposed

Counts A or B, contingent on the denial of his motion to

dissolve.

17. Corte moved, inter v% for the benefit of a Ger-

man application and to shift the burden of proof, con-

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tingent on the Primary Examiner denying motions to dis-

solve (96,314, Paper No. 15).

18. On January 16, 1969, the Primary Examiner en-

tered his decision on motions (96,314, Paper No. 27).

Meitzner’s motion to dissolve based on unpatentability of

the count was denied. Likewise, Meitzner’s motion to sub-

stitute either Proposed Counts A or B was denied.

Corte’s motion for benefit and to shift the burden of proof

was granted, making Corte the senior party.

19. Meitzner, being dissatisfied with the decision on

motions, filed a petition to the Commissioner (96,314,

Paper No. 31) in which he again urged that the count was

unpatentable and that either Proposed Counts A or B

should be substituted.

20. Rather than deciding the merits of Meitzner’s peti-

tion, the Commissioner, acting through the First As-

sistant Commissioner, ordered the parties to show cause

why Interference No. 96,314 should not be dissolved

(96,314, Paper No. 33). In the opinion in support of the

order to show cause, the Commissioner stated:

“The count of the present interference, if proper now,

would have been equally proper |during Interference No.

92,815| as a substitute count, but it was not proposed

by the Examiner or by any party.”

21. Corte responded to the order to show cause by

agreeing the interference should be dissolved (96,314,

Paper No. 34).

22. Meitzner responded to the order to show cause and

maintained the interference should not be dissolved, but

should continue only on the basis of Proposed Counts A or

B (96,314, Paper No. 36). Meitzner’s response constituted

a shift in his position. During the motion period Meitzner

sought to dissolve on the ground the count was unpatent-

able and made a motion, contingent on the denial of the

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motion to dissolve, to substitute Proposed Counts A or B.

Before the Commissione, on the other hand Meitzner

sought to substitute Proposed Counts A or B even if the

interference was dissolved as to the count then involved.

23. Mindick responded to the order to show cause and

maintained the interference should not be dissolved (96,-

314, Paper No. 35).

24. On April 10, 1969, the Commissioner entered a

decision dissolving Interference No. 96,314 (96,314, Paper

No. 41). Requests for reconsideration .were filed by Min-

dick (96,314, Paper No. 43) and Meitzner (96,314, Pa-

per No. 42). On June 6, 1969, the Commissioner denied

the requests for reconsideration (96,314, Paper No. 44),

25. On July 29, 1969, the Primary Examiner entered

an Office action in the Mindick continuation in which he

(1) withdrew the allowance of four claims, including

claim 1, and (2) rejected the four claims on the basis of

“estoppel.” The rejection was based on the Commis-

sioner’s decisions (Finding 23, supra) and the fact that

Mindick was a “junior” party in Interference No. 96,314

in view of the granting of the Corte motion to shift the

burden of proof. The estoppel rejection was made final on

November 24, 1969.

26. Following the final rejection, Mindick filed a peti-

tion to the Commissioner pursuant to 37 C.F.R. 1,181

seeking review of the estoppel rejection. A notice of ap-

peal was also filed.

27. On March 3, 1970, the Commissioner, acting

through the Director of Group 140, entered a decision

holding the action of the Primary Examiner rejecting four

claims in the Mindick continuation to have been improper.

The Director held that the decision on motions in Inter-

ference No. 96,314 granting Corte’s motion to shift was in

effect vacated by the action of the First Assistant Com-

missioner, citing Furukawa v. Garty, 151 USPQ 110

(Comm’r Pat. 1965).

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28. After the Director’s decision, Mindick presented

additional claims, which the Primary Examiner entered,

and the Mindick continuation was passed to issue. The

Mindick patent issued on December 22, 1970.

29. After the Mindick patent issued, Meitzner pre-

sented claims 47 through 50 for the purpose of an in-

terference with the Mindick patent.

30. This interference was declared on October 21, 1971.

31. As declared, four counts were involved, count 1

being reproduced above under the heading “The Counts.”

Counts 5 through 10 were added to this interference on

motion of Meitzner.

32. During the motion period of this interference,

Mindick moved to disselve on the ground that claims cor-

responding to the counts are not patentable to Meitzner,

because of “jvnior party estoppel” (Paper No. 13). The

Primary Exariiner could not find a “clear basis” for

junior party estoppel. Accordingly, by analogy to the

practice in connection with motions to dissolve on the

ground of no right to make, the Primary Examiner de-

nied Mindick’s motion (Paper No. 25). The noted prac-

tice provides:

“In order to preserve the inter partes forum for con-

sideration of this matter [right to make] a motion

to dissolve on this ground [no right to make] should

not be granted where the decision is a close one but

only where there is clear basis for it.” °

II. Opinion Relating to the Estoppel Issue

Estoppel, personal to the parties in an interference,

“relates to matters which have been determined to be

ancillary to priority,” within the meaning of 37 C.F.R.

*See M.P.E.P. 1105.02, page 183, col. 1, last sentence of the first

full paragraph (3rd Ed., Rev. 42, October, 1974).

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1.258(a). Cf. Plumat v. Dunipace, 464 F.2d 1403, 175

USPQ 105 (CCPA 1972) ; Avery v. Chase, 26 CCPA 823,

101 F.2d 205, 40 USPQ 343 (1939). Accordingly, th

matter of whether Meitzner is estopped to contest priorit,

vis-a-vis Mindick is properly before us at final hearing.

The doctrine of estoppel is based on the established

principle that an interference settles not only the rights

of the parties under the counts of the interference, but

also settles every question which might have been pre-

sented and determined. Estoppel is not applicable to a

party enjoying the status of a senicr party in the inter-

ference. 37 C.F.R. 1.257(b) ; Plumat v. Dunipace, supra.

Whether estoppel applies in a given case manifestly

depends on the particular facts of the case. Prior deci-

sions, based on different facts, therefore are of little as-

sistance in reaching a decision on the estoppel issue in

this interference.

Based on the Findings of Fact listed above, we hold

that Meitzner is estopped vis-a-vis Mindick to contest

priority in this interference. Meitzner failed, in Inter-

ference No. 92,815, to seek to contest priority vis-a-vis

Mindick (with or without Corte) with respect to the

present counts.

The dissolution of Interference No. 92,815 settled not

only the rights of Mindick and Meitzner with respect to

the count there involved, but also the parties’ rights with

respect to any count which might have been the basis for

a priority contest between Mindick and Meitzner. Meitz-

ner made no effort to move positively to contest priority

of any proposed count in Interference No. 92,815, because

his contingent motion to substitute was predicated on the

Primary Examiner denying Meitzner’s motion to dissolve.

When the Primary Examiner granted Meitzner’s motion

to dissolve, Meitzner received all the relief in Interference

No. 92,815 which he requested.

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When one considers the fact Mindick might lose some

or all of his patent claims if Meitzner is now permitted

to contest priority and that Mindick’s patent might not

have issued in the first instance had Meitzner made an

attempt in Interference No. 92,815 to contest priority

vis-a-vis Mindick with respect to the counts involved in

this intereference, it is manifest that Mindick is preju-

diced by Meitzner’s failure to act in Interference No.

92,815. We de not believe Meitzner’s failure to act should,

at this late date, result in prejudice to Mindick.

We recognize that a second interference was declared

by the Patent Office involving, inter alia Meitzner and

Mindick. However, the ultimate conclusion of the Patent

Office, acting through the First Assistant Commissioner,

was that the second interference should not have been

declared. The ultimate conclusion was based squarely on

an estoppel theory.

One reading the various decisions of the First Assistant

Commissioner might well reach a conclusion that the

estoppel was to run against both Meitzner and Mindick.

However, such a conclusion would be plainly at odds with

the provisions of 37 C.F.R. 1.257(b), which provide, in

effect, that estoppel does not apply to a party enjoying

the status of a senior party in an interference which is

dissclved as a result of a motion under 37 C.F.R. 1.231.

We note that, consistent with the provisions of 37 C.F.R.

1.257(b), the Director held the Primary Examiner’s ac-

tion rejecting Mindick’s claims 1 through 4 on the ground

of junior party estoppel to have been improper.

III. Discussion of Meitzner Arguments with

Respect to Estoppel

Meitzner claims that Mindick has waived any right to

rely on estoppel, because Mindick failed “to present a

timely motion to dissolve based upon . . . estoppel” (reply

19a

brief, p. 17). The plain fact is that Mindick filed a timely

motion to dissolve this interference on the basis of junior

party estoppel. Mindick’s timely motion in this interfer-

ence, of course, distinguishes this case from Vickery Vv.

Barnhart, 28 CCPA 979, 118 F.2d 578, 49 USPQ 106

(1941), where Vickery failed to make a timely motion,

49 USPQ at 11z, col. 1. Moreover, the meer fact that

Mindick urged the First Assistant Commissioner not to

dissolve the second interference in which the Mindick

continuation application was involved does not mean that

Mindick waived a right to protect, in this interference,

his involved patent which, of course, issued after dissolu-

tion of the second interference.

We deem it manifest that Mindick, as the senior party,

was not under any obligation in Interference No. 92,815

to formulate counts, such as those here involved.* More-

over, the fact that Mindick chose to have his patent issue

with claims which are narrower than the count of Jnter-

ference No. 92,815 does not alter the estoppel against

Meitzner. Mindick had a right to rely on the provisions

of 37 C.F.R. 1.257(b) upon Meitzner’s failure to act in

Interference No. 92,815. Compare Zx parte Miller, 124

USPQ 419, 423 (Bd. App? 1959).

Meitzner also claims that Mindick cannot urge estoppel

against Meitzner, because Mindick was made a junior

party in Interference No. 92,815. We disagree. When

Interference No. 92,815 was declared, Mindick was the

senior party. It is true that the Primary Examiner

granted Corte’s motion to shift the burden of proof, thus,

apparently making Mindick a junior party vis-a-vis Corte.

However, the decision of the Primary Examiner granting

® Meitzner’s behavior in Interference No. 92,815 should be con-

trasted to Mindick’s behavior in the same interference. It will be

noted that Mindick made an attempt, albeit unsuccessful, to have

Proposed Count A substituted for the count, whereas Meitzner

wanted the interference dissolved.

bs

20a 4

Corte’s motion was clearly erroneous inasmuch as at the

same time the Primary Examiner dissolved the interfer-

ence. See Furukawa v. Garty, supra.

Moreover, even if we accept Meitzner’s contention that

Mindick was a junior party to Corte Meitzner overlooks

the important fact that only Mindick and Meitzner are

involved in this interference. Mindick has always been

senior to Meitzner apart from whether Mindick was sen-

ior or junior to Corte. Accordingly, Mindick may prop-

erly urge estoppel against Meitzner.* Any estoppel which

Corte might have been able to urge against Mindick in

some other interference is of no avail to Meitzner in this

interference, since any such right is personal to Corte

only.

Lastly, Meitzner maintains that estoppel does not lie

against him, because he “has been continuously claiming

subject matter covered by the count of” Interference No.

92,815 (reply brief, p. 18 et seg.). Merely claiming sub-

ject matter in an application will not prevent the type

of estoppel here involved; rather it is the failure to move

to make that claimed subject matter the subject of a

priority contest which creates the estoppel.

IV. Decision Based on Estoppel

In view of what we have indicated above, Meitzner is

estopped to contest priority of the subject matter here

involved vis-a-vis Mindick. Accordingly, we award prior-

ity to Mindick based on estoppel.

*In this respect, the Manual of Patent Examining Procedure,

1110.02 (3rd Ed., Rev. 42, October, 1974) provides: “Where it is

only the junior parties to the interference that have common sub-

ject matter additional to the subject matter of the interference, the

senior one of this subgroup is free to claim this common subject

matter.”

2la

Priority Proofs

Our decision on the estoppel issue disposes of the inter-

ference. However, to complete the record and provide

any reviewing court (35 U.S.C. 141-146) with a com-

plete picture, we believe it appropriate to consider the

priority proofs.

1. Mindick’s Effective Filing Date

At the time this interference was declared, Mindick

was accorded the benefit of parent application, Serial No.

691,541, filed October 22, 1957 (Paper No. 1), which

made him senior party. During the motion period, Meitz-

ner moved to add six counts and the motion was granted.

Mindick, however, did not move, as he might have, for

the benefit of his parent application with respect to the

six counts.

Meitzner claims that Mindick should be made junior

party on the basis of the filing date of the application

which matured into the Mindick patent, which filing date

is subsequent to Meitzner’s filing date. We disagree.

“(T jhe order of taking testimony should be placed upon

the applicant last to file [Mindick, in this case] unless all

the counts of the interference read upon an earlier appli-

cation {Mindick’s parent application, in this case] which

antedates that of the other party.” Jn re Kedeclaration

of Interferences, 1926 C.D. 75, 76 (Comm’r. Pat. 1926).

Accordingly, if Mindick was not entitled to the benefit of

his parent application with respect to all counts, he should

have been made the junior party.

However, when the Patent Interference Examiner set

the testimony period, he plainly indicated that Meitzner,

as junior party, was to proceed first (Paper No. 37). If

Meitzner believed that Mindick was not entitled to the

benefit of his parent application, the time for Meitzner

to speak up was after the testimony period was set. In

22a

view of Meitzner’s failure to object to the order in which

the Patent Interference Examiner required testimony to

be taken, Meitzner will not be allowed, at this time, to

argue Mindick should be junior party.

2. Mindick’s Preliminary Statement

The named inventors in the Mindick patent are Mindick

and Svarz. The preliminary statement filed by Mindick

in this interference is signed only by Mindick. Accom-

panying the preliminary statement was a paper, signed

by counsel, indicating that “[o]n investigation, it has

been found that Morris Mindick was the sole inventor of

the subject matter set forth in the Counts of the Inter-

ference.”

A preliminary statement must ordinarily be signed by

the inventor. 37 C.F.R. 1.215(a). Accordingly, we will

review Mindick’s priority proofs to determine whether

Mindick, as a sole inventor, conceived and actually re-

duced to practice prior to his effective filing date of Octo-

ber 22, 1957. If we do not find that Mindick conceived *

and actually reduced to practice prior to October 22,

1957, the party Mindick and Svarz will be restricted to

their effective filing date.

3. Mindick’s Priority Proofs

Mindick alleges that he conceived in invention on April

6, 1955, and in support of his allegation refers to a “Re-

search Suggestion” (Mindick Ex. 8) in which the follow-

ing appears:

*Mindick has not argued conception coupled with diligence.

Hence, no diligence issue is presented.

23a

“(a) Suspension polymerization of styrene-DVB "!

(>8%) mixture to which has been added, before or

during polymerization, a timited amount of an or-

ganic swelling agent.”

We do not regard Mindick’s “Research Suggestion” as

a conception of the invention defined by the counts. The

“Research Suggestion” constitutes, at the very best, a

general idea that styrene and divinyl benzene could be

polymerized in the presence of water and an organic

swelling agent. The present counts define something much

narrower than Mindick’s “general idea.”

Conception must be something more than a general

idea; rather conception must include all the essential fea-

tures of the count. Cislak v. Wagner, 42 CCPA 701, 215

F.2d 275, 103 USPQ 39 (1954). Moreover, conception

can only be established by showing “the formation in the

mind of the inventor of a definite and permanent idea of

the complete and operative invention as it is thereafter

to be applied in practice. .. .” Fredkin v. Irasek, 55

CCPA 1302, 397 F.2d 342, 158 USPQ 280 (1968), cert.

denied, 393 U.S. 980, 159 USPQ 799 (1968) ; Mergen-

thaler v. Scudder, 11 App. D.C. 264, 1897 C.D. 724 (D.C.

Cir. 1897).

It is obvious that Mindick has not shown conception.

According to the Mindick patent (col. 1, lines 11-13), in-

creased “water holding capacities result from proper se-

lection of the solvent proportion according to the inven-

tion.” Based on our reading of Mindick’s patent, proper

proportions are 30-70% by weight of the monomer so!=-

tion (col. 1, line 64 through col. 3, line 10). Mindick’s

“Research Suggestion” does not mention the proportions

of the counts. Moreover, Mindick stated on cross-exami-

nation that (1) the use of proportions outside the scope

of the counts, i.e., 5% toluene, would constitute “‘a lim-

* DVB is divinyl benzene.

24a

ited amount of an organic swelling solvent” within the

meaning of Mindick Ex. 8 and (2) “(t]he word ‘limited,’

in research, suggests that I am not sure what I intended

by saying that” (Record for Mindick, pp. 53 & 59).

Lastly, we note that Mindick’s “Research Suggestion”

does not mention a single specific solvent which Mindick

believed might be a suitable “organic swelling agent.”

Compare Meitzner v. Corte, supra.

This brings us to the actual experimental work per-

formed by Mindick and his associates. Mindick did poly-

merize styrene and divinylbenzene in the presence of a

solvent, but in the absence of water (Record for Mindick,

p. 10). There is no evidence in the record that Mindick

performed suspension polymerizations, i.e., polymeriza-

tions in which the monomers are copolymerized in the

presence of a solvent and water as called for by the

counts. The suspension polymerization experiments were

carried out by Wen and Svarz.

The following table, with a footnote deleted, appears

on page 31 of Mindick’s brief and will be helpful in un-

derstanding the case. The data contained in the table is

fairly supported by the record, except we note zinc chlo-

ride, not aluminum chloride, was used during chloro-

methylation of Resin Nos. JJS-8, JJS-9, and JJS-25.

TABLE

MINDICK UNITED STATES PATENT 3,549,562

ARRANGED IN CHRONOLOGICAL ORDER

Resin Copolymerization Chloro- Analyses Me N Resin

SO Date Solvent $Solvent DVB Methylation WHC Swell $Shrink Comor.

B7-535 9/6/55 Toluene 40% 16% ZnCl,, RT 46.6 27.4 $.5 32.0

Rw-337 9/21/55 | Chlorobenzene 403% 16% ZnCl>, RT 45.0 31.0 5.0 36.0

R'-590 10/5/55 | Chlorobenzene 40% 12% Zncl., RT 47.4 32.9 3.6 36:5

Riv-3°6 10/19/55} Benzene 403 16% ZnCl.o, RT 38.8 30.1 Sek 32.2

Ri-597 10/25/55! Toluene 55% 20% Zncl., RT 53.8 39.4 2.9 42.5

Rv-5983 10/25/55) EtcCls 40% 16% Zncl., RT 42.3 34.0 1.4 35.4

JIS-8 11/28/55) Xylene 40% 203% A1Cl3, RT 40.1 26.0 2.1 28.1

JIS-9 11/28/55; Xylene 503% 203% AlCl, RT 44.9 23.1 2.8 25.9

JZS=25 1/12/56 | Toluene 553 20% AlCl, RT 52.0 23.9 3.6 23.5

JITS-26 1/12/56 | Toluene 55% 203% A1C13/ZnC1,,RT 52.6 21.0 3.6 24.6

JIS-38 1/30/56 | Toluene 553 203 AlCl, Reflux 53.7 Bees Bel 22.0

JIS-39 1/30/56 | Toluene 553 20% SnCl,,Reflux 54.3 17.6 5.4 re Pe

JIS-43 2/8/56 Toluene 553 203 A1Cl_,Reflux 53.5 13.6 2.9 16.5

JIS-52 2/20/56 | Toluene 603 - 20% AlC1,,Reflux 56.0 17.9 “s Bel 20.6

JIS-53 2/22/56 | Toluene 653% 20% AlC1,,Reflux 62.2 16.1 3.) 19.2

JIS-58 2/22/56 | Toluene 50% 203% AlC1,,Reflux A9.4 Tr 8 1.0 Sud

|

27a

During 1955, Wen prepared various ion exchange res-

ins designated as RW-587 through RW-598 in the table."

While Wen testified that his experimental work “origi-

nated” from Mindick’s “Research Suggestion” (Record

for Mindick, pp. 146 & 171), Wen also stated that it was

his general practice to design his own experiments, in-

cluding selectien of the “conditions of reaction,” “the

materials,” and “the proportions of the materials” (Rec-

ord for Mindick, pp. 230-231). Wen never stated that

Mindick told him to use 40% or 55% solvent as shown

in the RW resins in the table.

At this point, we wish to note that the ion exchange

resins prepared by Wen and method used by Wen to pre-

pare those ion exchange resins, while falling witnin the

scope of counts 1 through 4, do not fall within the scope

of counts 5 through 10. Counts 5 through 10 call for “a

volume expansion on conversion into hydroxide form of

less than 30 percent” and Wen’s resin have a volume ex-

pansion (listed as % Swell in the table) of greater than

30.0% in each instance.

After Wen left Mindick’s assignee, Svarz prepared

various ion exchange resins designated as JJS-8 through

JJS-58 in the table. The various ion exchange resins

prepared by Svarz and the method used by Svarz to pre-

pare those ion exchange resins fall within the scope of

all counts. However, there is nothing in the testimony

of Svarz which indicates that Svarz attributes the spe-

cific proportions of solvent used in making Resin Nos.

JJS-8 through JJS-58 to any specific suggestion of Min-

dick. Likewise, Mindick did not testify that he made any

such specific suggestion to Svarz.

Based on the record before us, we are unable to con-

clude that Mindick, as a sole inventor, conceived and

‘© Resin No. RW-585 was not made by suspension polymerization

and is therefore outside the scope of the counts.

28a

actually reduced to practice the invention defined by the

counts prior to the time Mindick and Svarz filed appli-

cation, Serial No. 691,541, on October 22, 1957. Accord-

ingly, the party Mindick and Svarz are limited to their

effective filing date.

4. Meitzner Priority Proofs

Meitzner alleges a conception in January, 1957 (brief,

p. 24). Meitzner further alleges that in March, 1957, one

Sigafoos, “operating under . . . [a] conception of ...

Meitzner . . . and under the direction of . . . [named co-

inventor] Oline copolymerized in water suspension a mix-

ture containing [80%] styrene and 20% DVB dissolved

in 35% t-amyl alcohol and produced raw beads. . .”

(brief, p. 25). Meitzner still further alleges that, based

on an EDC volume swelling ratio” test, the raw beads

were considered to have “a more porous structure” (brief,

p. 26). Meitzner alleges that the raw beads were sulfo-

nated to make ion exchange resins which had “a high

degree of porosity ...” (brief, p. 26). Lastly, Meitzner

alleges that testing which took place by August 1, 1957,

“bore out the unique qualities” of the ion exchange resin

prepared by Sigafoos (brief, p. 29).

None of the above-mentioned allegations of Meitzner

were denied or controverted in Mindick’s brief. We have

considered the various portions of the record referred to

by Meitzner in his brief in support of his allegations and

we find the record supports the allegations by a pre-

ponderance of evidence. We will further observe that

named co-inventor Oline told Sigafoos what preparations

to make (Record for Meitzner, p. 882) and that Mindick

has not questioned whether Meitzner and Oline are joint

inventors. Accordingly, we hold that Meitzner conceived

and actually reduced the invention defined by counts 1

through 4 prior to Mindick’s effective filing date, viz.,

October 22, 1957.

29a

5. Mindick’s Arguments with Respect to Meitzner’s

Priority Proofs

Mindick’s arguments with respect to Meitzner’s proofs

appear on pages 42 and 43 of Mindick’s brief.

Mindick notes that Meitzner’s proofs involve the use of

a non-swelling solvent, i.e., tertiary amyl alcohol. We

will merely note that the solvent called for by the counts

is defined in such a manner as to cover the use of tertiary

amyl] alcohol.

Mindick notes that Meitzner already lost an interfer-

ence to Corte in which he attempted to prove priority

using work performed with tertiary amyl alcohol. We

repeat, at this point, the comments made in the next to

the last paragraph under the heading “Mindick Motion

for Judgment on the Record,” supra.

Mindick claims that the work done by Sigafoos was

subsequent to Mindick’s actual reduction to practice. In

view of our disposition of Mindick’s priority proofs, it

is obvious we disagree.

Mindick, relying on Meitzner Exhibit 147, argues that

even as late as November 26, 1957, Meitzner believed the

invention “was still in a preliminary stage... .” We

believe Mindick has misread Exhibit 147. When the ex-

hibit is considered as a whole, in light of the record, we

believe »ny statements therein which might be considered

“doubts” on Meitzner’s part relate to attempts to com-

mercialize the invention as opposed to “doubts” as to a

conviction of success or an actual reduction to practice.

It should be manifest that an invention need not have

been developed to the stage of commercialization to sup-

port a finding of an actual reduction to practice.

6. Counts 5 through 10

Meitzner does not contend that any experimental work

falling within the scope of counts 5 through 10 was per-

30a

formed by Meitzner prior to Mindick’s effective filing

date. Rather, Meitzner argues, with respect to counts 5,

6, and 9, that the raw beads made by Sigafoos inherently

possessed the characteristics called for by these counts.

There is no evidence in the record that Meitzner or his

associates at Rohm and Haas Company appreciated this

fact prior to Mindick’s effective filing date. Meitzner’s

contention is apparently made on the basis of tests per-

formed after Mindick’s filing date. Assuming that any

such tests are accurate, we believe Meitzner is attempting

to prove conception and actual reduction to practice of

the invention defined by counts 5, 6, and 9 nunc pro tune.

Compare Langer v. Kaufman, 59 CCPA 1261, 564 F.2d

915, 175 USPQ 172 (1972).

Turning to counts 7, 8, and 10, Meitzner contends the

subject matter thereof is an obvious extension of the sub-

ject matter of counts 1 through 4 (brief, p. 31) and “the

chloromethylation and amination techniques represent ex-

cess baggage and contribute nothing novel or patentable”

over counts 1 through 4 (brief, p. 32).

We cannot agree with Meitzner that he would be en-

titled to an award of priority with respect to counts 5

through 10 merely on the basis of his having conceived

and actually reduced to practice, prior to Mindick, of

the subject matter of counts 1 through 4. Every limita-

tion in a count is material and must be proved to show

a reduction to practice. Fredkin v. Irasek, supra. Meitz-

ner has not shown that he chloromethylated and aminated

required by counts 7, 8, and 10. Moreover Mindick’s

proofs make it clear that the process defined by counts 1

through 4 will not necessarily result in raw beads which

upon chloromethylation and amination result in ion ex-

change resins having all the characteristics mentioned in

counts 5 through 10. In this connection, note that the

Wen ion exchange resins in the table, supra, do not pos-

3la

sess the noted characteristics, whereas the Svarz ion ex-

change resins do possess those characteristics.

7. Summary of the Priority Proofs

For the sake of completeness, we indicate that we

would award priority, based on the proofs alone, as fol-

lows: (1) counts 1 through 4 to Meitzner and (2) counts

5 through 10 to Mindick.

Decision

Priority of invention of the subject matter of all the

counts, viz., counts 1 through 10, is awarded to Morris

Mindick and Jerry J. Svarz, the senior party.

BOARD OF PATENT INTERFERENCES

/s/ Walter A. Modance

WALTER A. MODANCE

Examiner of Interferences

/s/ Fred E. McKelvey

FRED E. MCKELVEY

Examiner of Interferences

/s/ Ian A. Calvert

IAN A. CALVERT

Examiner of Interferences

32a

UNITED STATES COURT OF CUSTOMS AND

PATENT APPEALS

Patent Appeal No. 76-577

Interference No. 97,787

ERICH F. MEITZNER AND JAMES A. OLINE,

Appellants,

Vv.

MorRIS MINDICK AND JERRY J. SVARZ,

Appellees.

DECIDED: FEBRUARY 24, 1977

MILLER, Judge.

The junior party, Meitzner and Oline (Meitzner),’ ap-

peals from the decision* of the Patent and Trademark

Office (PTO) Board of Patent Interferences (board)

awarding priority of the invention described in the ten

counts in issue to the senior party, Mindick and Svarz

(Mindick).* We affirm.

The Invention

The invention invelves a process of making porous

copolymer beads and of forming these beads into anion-

1 Involved on application serial No. 749,526, filed July 18, 1958,

and entitled “Polymerization Processes and Products Therefrom.”

2 In interference No. 97,787.

’Involved on patent No. 3,549,562, entitled “Production of Ion

Exchange Resin Particles,” issued December 22, 1970, on applica-

tion serial No. 463,923, filed June 14, 1965, a continuation of appli-

cation serial No. 691, 541, filed October 22, 1957, the benefit of whose

filing date was accorded Mindick for purposes of this interference.

33a

exchange resins; also, the copolymer-bead and anion-

exchange-resin products. Counts 1-6 are directed to a

process of making porous copolymer beads, with counts

5 and 6 further limited to beads “suitable for prepara-

tion of ion-exchange resin beads’; counts 7 and 8 add

the steps of forming the anion-exchange resins; count

9 is a product-by-process claim to the copolymer beads;

and count 10 is a product-by-product claim to the anion-

exchange resins. The process comprises copolymerizing

a monovinyl aromatic monomer (¢e.g., styrene) and poly-

vinyl aromatic monomer (¢.g., divinyl benzene) in an inert

organic liquid that is a solvent for the monomers but a

nonsolvent for the copolymer, while the monomer-organic

liquid solution is dispersed in water, thereby forming

porous beads of the copolymer. The porous beads are then

chloromethylated and aminated to introduce anion-ex-

change groups therein. Counts 1, 5, and 7 are illustra-

tive:

1. A process for producing copolymers of in-

creased porosity which comprises:

(A) dissolving from 50 to 88% by weight

of a mononvinyl aromatic monomer and from 12

to 50% of a polyvinyl aromatic monomer in an

‘inert organic liquid which is a solvent for the

monomers but is a nonsolvent for the polymer-

ized product of the monovinyl and polyviny]

monomers, said solvent being present in an

amount of about 30 to 70% by weight based on

the weight of solution;

(B) incorporating said solution into an ex-

cess of water to form a dispersion of droplets;

and

(C) copolymerizing said monoviny! and said

polyvinyl monomers while suspended in said

aqueous medium and in the presence of said

inert organic liquid.

34a

5. A process for producing solid vinylaromatic

copolymer beads suitable for preparation of ion-ex-

change resin beads characterized by increased po-

rosity and reduced swelling and shrinkage in use

which comprises:

(A) dissolving a monovinyl aromatic mono-

mer and a polyvinyl aromatic monomer in an

inert organic liquid which is a solvent for the

monomers but is a nonsolvent for the poly-

merized product of the monoviny! and polyviny!

monomers, said solvent being present in an

amount of about 30 to 70% by weight based on

the weight of solution;

(B) suspending the monomer solution as dis-

persed droplets in an aqueous dispersion medium ;

and

(C) copolymerizing said monomers in aqueous

dispersion to form solid copolymer beads which

upon chloromethylation to give an average of

from 0.75 to 1.5 chloromethyl groups per aro-

matic nucleus and subsequent amination with

trimethylamine yield trimethyl quaternary am-

monium anion-exchange resins characterized in

chloride form by:

(1) a water holding capacity of from 40

to 65 weight percent; and

(2) a volume expansion on conversion

into hydroxide form of less than 30 percent.

7. A process for producing anion-exchange resins

which comprises: chloromethylating a vinyl aro-

matic copolymer produced by the process of Count 5

to give an average of from 0.75 to 1.5 chloromethy]

groups per aromatic nucleus, and thereafter aminat-

ing the chloromethylated copolymer to give an anion-

exchange resin.

35a

Background

This is the third interference involving Meitzner and

Mindick and the same applications or parent applica-

tions thereof. The first (No. 92,815) involved Meitzner,

Mindick, and Corte (Corte and Meyer). When declared,

the senior party was determined to be Mindick. During

the motions period, both Meitzner and Corte moved to

dissolve, under what was then 37 CFR 1.232 (subse-

quently 37 CFR 1.231), due to unpatentability of the

count over the prior art. Contingent on denial of their

motion to dissolve, Meitzner also proposed a substitute

count; and, contingent on denial of their motion to dis-

solve, Corte also moved for the benefit of the filing date

of a German application under 35 USC 119 and to shift

the burden of proof (making Corte the senior party).

Mindick moved to substitute a count, which motion was

opposed by Meitzner on the ground that the substitute

count was unpatentable over the prior art. The Meitzner

and Corte motions to dissolve were granted, as was

Corte’s motion for the benefit of the filing date of the

German application and to shift the burden of proof.

The motion of Mindick to substitute was denied because

the substitute count was considered unpatentable over the

prior art. After a petition (filed by Mindick) for re-

consideration of (1) the decision to accord Corte the

benefit of their foreign filing date and to shift the burden

of proof, and (2) the decision to dissolve due to the

unpatentability of the count (reconsideration of the de-

cision to dissolve was opposed by Meitzner), the decisions

were adhered to, and No. 92,815 was dissolved.

Mindick then filed a continuation application.

A second interference (No. 96,314), also involving

Meitzner, Mindick, and Corte, was next declared a

different (phantom) count. As in the first interfei .ce,

the senior party was determined to be Mindick. During

the motions period, both Meitzner and Corte filed motions

36a

to dissolve due to unpatentability of the count over the

prior art. Contingent on denial of their motion, Meitzner

also moved to substitute counts; and, contingent on de-

nial of their motion, Corte also moved to be accorded

their foreign priority date and to shift the burden of

proof (making Corte the senior party). In contrast to

the first interference, the motions to dissolve were de-

nied. The motion of Meitzner to substitute counts was

also denied. The motion of Corte for their foreign pri-

ority date and to shift the burden of proof was granted.

Meitzner then petitioned the Commissioner, urging that

the count was unpatentable and that their proposed counts

should be substituted. The Commissioner, acting through

the First Assistant Commissioner and without reaching

the merits of the petition, issued an order to show cause

why No. 96,314 should not be dissolved. Both Meitzner

and Mindick maintained that the interference should not

be dissolved, with Meitzner arguing that the interference

should continue on their proposed substitute counts.

Nevertheless, the Commissioner dissolved the proceeding

for failure “to litigate matters which could and should

have been raised in prior interference No. 92,815 involv-

ing the same parties.”

The Mindick application then reverted to ex parte

prosecution, where the examiner rejected some of the

claims on junior party estoppel arising from No. 96,314.

Mindick petitioned the Commisssioner for review of the

estoppel rejection. The Commissioner, acting through the

Group Director, granted the petition, holding that “the

examiner erred in placing [Mindick] in the status of

junior party in Interference No. 96,314 and any rejec-

tion based on such junior party status is improper,”

because the decision granting the motion to Corte to shift

in No. 96,314 was vacated by the Commissioner’s dis-

solution of that interference. This left Mindick as the

senior party in No. 96,314. The Mindick application was

then passed to issue.

37a

After the patent issued, Meitzner presented four claims

for purposes of an interference with the Mindick patent,

and the present interference was declared. During the

motions period, Meitzner moved to amend by adding

present counts 5-10, and Mindick moved to dissolve the in-

terference on junior party estoppel for failure of Meitzner

in the first interference to contest priority on all subject

matter common to the Mindick and Meitzner applications.

The motion to add counts was granted, and the motion to

dissolve was denied because the Primary Examiner said he

could not find a “clear basis” for applying estoppel.

Board Opinion

The board considered, among other issues,‘ whether

there was junior party estoppel of Meitzner from con-

testing priority vis-i-vis Mindick with respect to counts

1-10, essentially the issue raised by Mindick’s motion to

dissolve which had been denied by the Primary Examiner.

Based on findings of fact substantially as related above,

it held Meitzner estopped from contesting “priority of the

subject matter here involved,” since they “failed, in In-

ference No. 92,815, to seek to contest priority vis-d-vis

Mindick (with or without Corte) with respect to the

present counts.” It said that dissolution of that inter-

ference settled not only the rights of Mindick,and Meitz-

ner with respect to the count there involved, but also

their rights with respect to any count that might have

*The board also considered (1) Mindick’s motion for judgment

on the record, and (2) Mindick’s motion to dissolve based on 35

USC 135(b). After making its determination on the estoppel

issue, the board considered each party’s priority proofs. In con-

sidering Mindick’s priority proofs, the board rejected the Meitzner

priority proofs, the board rejected the Meitzner argument that

Mindick, having failed to move for the benefit of their parent

application with respect to counts 5-10 (when Meitzner moved to add

these counts during the motions period), could not claim the benefit

of their parent application and should have been made junior party.

The board said that the time for Meitzner to raise this point was

after the testimony period was set, with Meitzner designated to

proceed first, as junior party.

38a

been the basis for a priority contest between them. The

board added:

Meitzner made no effort to move positively to con-

test priority of any proposed count in Interference

No. 92,815, because his contingent motion to substi-

tute was predicated on the Primary Examiner deny-

ing Meitzner’s motion to dissolve. When the Primary

Examiner granted Meitzner’s motion to dissolve,

Meitzner received all the relief in Interference No.

92,815 which he requested.

Although recognizing that Mindick had failed to raise

the junior party estoppel issue in the second proceeding

(No. 96,314), the board noted that the proceeding had

been dissolved “based squarely on an estoppel theory.”

Finally, the board said:

One reading the various decisions of the First

Assistant Commissioner might well reach a conclusion

that the estoppel was to run against both Meitzner

and Mindick. However, such a conclusion would be

plainly at odds with the provisions of 37 C.F.R. 1.257

(b), which provide, in effect, that estoppel does not

apply to a party enjoying the status of a senior party

in an interference which is dissolved as a result of a

motion under 37 C.F.R. 1,231. We note that consist-

ent with the provisions of 37 C.F.R. 1,257(b), the

Director held the Primary Examiner’s action re-

jecting Mindick’s claims 1 through 4 on the ground of

junior party estoppel to have been improper.

Accordingly, the board awarded priority to Mindick

on counts 1-10.

OPINION

Estoppel

We agree with the board that there is estoppel against

Meitzner from claiming the subject matter of the present

39a

counts. Meitzner failed to contest priority with respect

to such subject matter in the first interference.°

This court has held that a party to an interference has

a duty to present all claims involving common subject mat-

ter with any of the other parties in the proceeding, and

that failure to timely present these claims estops him

from presenting them at a later time. Jn re Shimer, 21

CCPA 979, 69 F.2d 556, 21 USPQ 161 (1934). In that

case the court said:

[A]ppellant argues that there was no common sub-

ject matter between his application and that of Mac-

Clatchie in said interference, but that there was such

common subject matter between his application and

that of Paterson et al., another party thereto; that

the addition of said counts would have resulted only

in a redeclaration of intereference between appellant

and the party Paterson et al., which would have re-

sulted in no injury to Paterson et al.....

. ... [I}f the matter was one which might have

been determined in the first interference, the party

having a right to have them [sic, it] so determined,

who fails to do so, cannot afterwards require their

[sic, its} consideration. The rule prevails, irrespec-

tive of the number of parties in the original interfer-

ence. In determining whether the same could have

been so determined, the interference in fact depends

5 Also, we do not agree with Meitzner (see note 4, supra) that

the board erred “in excusing Mindick et al’s failure [in this inter-

ference] to move for the benefit of his [sic, their] parent application

regarding counts 5 through 10” and “in summarily assuming that

counts 5 through 10 are supported by the 1957 Mindick et al parent

application.” Under 37 CFR 1.224 Mindick could rely on their

parent application since it was specified in the notice of inter-

ference. Breen V. Cobb, 487 F.2d 558, 179 USPQ 733 (CCPA 1973).

If Meitzner questioned whether such reliance extended to added

counts 5-10, it was for them to raise the isue after the testimony

period was set.

40a

chiefly upon the subject matter disclosed, and not

merely upon the language of the respective claims.

It may be stated that this rule works no hardship to

him who is diligent in pursuit of his rights. When

an interference is declared, the files of his contest-

ants are open to him. He has full cognizance of their

disclosures and claims. So advised, it becomes his

duty to put forward every claim he has. Rule 109 °°!

affords him this opportunity. If the rule be not en-

forced or enforceable, then delays and litigation are

greatly increased. It is quite obvious that the doctrine

of estoppel . . . results in the better conduct of the

business of the Patent Office and in the public good.

(Id. at 981-83, 69 F.2d at 557-58, 21 USPQ at 163.]

Accord, Avery Vv. Chase, 26 CCPA 823, 101 F.2d 205, 40

USPQ 343, cert. denied, 307 U.S. 638, 41 USPQ 799

(1939). Contra American Cyanamid Co. v. Coe, 106 F.2d

851, 42 USPQ 302 (CA D.C. 1939) ; International Cellu-

cotton Products Co. v. Coe, 85 F.2d 869, 30 USPQ 366

(CA D.C. 1936). This doctrine of estoppel does not

apply, however, to a party enjoying the status of a senior

party in an interference that is dissolved as a result of

a motion under 37 CFR 1.231. See 37 CFR 1.257(b).

The record clearly shows that Meitzner could have

added the subject matter of the present counts in the first

interference. The Meitzner application specification in

the present interference is the same as in the first in-

terference; and the Mindick patent specification is sub-

stantially the same as the application specification in the

first interference. As admitted by Meitzner in their reply

brief, only subject matter on two lines in the parent

application was omitted in the patent specification in-

volved in this proceeding.

®The pertinent portions of then-Rule 109 are in substance in-

corporated in 37 CFR 1.231.

4la

It is argued by Meitzner that the board improperly

found them estopped on counts 1-4, because the Mindick

parent application does not clearly disclose “copolymers

of increased porosity” of any type, as recited in counts

1-4, so that these counts could not have been made in any

prior interference. They state that the Mindick parent

application only discloses ion-exchange resins of increased

porosity. However, we note that the Mindick parent

application expressly discloses that “porosity is achieved

. . . by polymerizing the monomers in the presence of

certain proportions of a water-immiscible organic liquid

solvent for the monomers,” which is a clear disclosure thet

the copolymer has porosity. Also, this argument by Meitz-

ner is contradicted by their statement in the first inter-

ference, namely:

While the utility for the inventions in each of the

applications in interference is in ion exchange resins,

the improvements disclosed have to do with the prep-

aration of a divinylbenzene-styrene copolymer which

by steps well known in the art may be converted to

an ion exchange resin. ... It is apparent, therefore,

that any common invention that exists among the

applications in interference resides in the prepara-

tion of the base polymer... .

The statement recognizes that the “improvements” (e.¢.,

increased porosity) are in the copolymer.

It is further argued by Meitzner that the process dis-

closed in the Mindick parent application does not form

copolymers having a “true porosity” (i.e., macroporous

structure), so that the application does not clearly dis-

close “copolymers of increased porosity.” However, counts

1-4 do not require such a “true porosity,” and it has not

been shown that only copolymers having a macroporous

structure have “porosity.” Indeed, as acknowledged by

Meitzner, the gel-type structures of the prior art have a

“gel porosity.” Even if counts 1.4 were limited to a

ee a a ee

42a

process of forming copolymers having such a “true por-

osity,” the argument that the Mindick parent appiication

does not disclose “true porosity” is unsupported by evi-

dence. Argument of counsel cannot take the place

of evidence lacking in the record. In re Lindner, 59

CCPA 920, 457 F.2d 506, 173 USPQ 356 (1972); In re

Schulze, 52 CCPA 1422, 346 F.2d 600, 145 USPQ 716

(1965).

We disagree with the contention of Meitzner that Min-

dick waived their right to raise junior party estoppel

in this interference by not raising it in the second inter-

ference. It is stated by Meitzner that “{c]jonsiderable de-

lay and vexatious litigation might have been avoided

had Mindick et al. acted in a timely fashion and brought

the motion to dissolve based on alleged estoppel in the

second interference.” However, we note that the second

interference was dissolved, following the Commissioner’s

order to show cause, on the basis of estoppel for failure

“to litigate matters which could and should have been

raised in [the first interference].” Thus, Meitzner suf-

fered no “considerable delay and vexatious litigation.”

Although Mindick did not raise the issue, the reason for

applying the waiver doctrine, as urged by Meitzner, is

nonexistent. It is further stated by Meitzner that, by fail-

ing to move for dissolution of the second interference,

Mindick “denied to Meitzner et al. their right to proceed

... With a motion to amend and/or to adversary argument

before the Primary Examiner... .” However, the sub-

stance of the asserted “right” is speculative since Meitz-

ner had moved before the Primary Examiner to substi-

tute counts (which motion was denied).

Reliance by Meitzner on Vickery v. Barnhart, 28 CCPA

979, 118 F.2d 578, 49 USPQ 106 (1941), for the proposi-

tion that Mindick waived their right to rely on junior

party estoppel is misplaced. In Vickery, this court held

that the appellant was not allowed to raise the issue of

43a

disclaimer of invention in the same proceeding, since he

had failed to timely move to dissolve the interference on

that basis; hence the estoppel was based on a failure to

follow Patent Office rules. The estoppel issue was properly

raised in the present proceeding by a motion to dissolve.

It is contended by Meitzner that the board’s holding

that the Primary Examiner erred in the first interference

in according Corte senior party status suggests that the

present interference is an extension or continuation of

the first interference. We do not agree. There was over

a seven-year hiatus between termination of the first inter-

ference and commencement of this proceeding; moreover,

the parties in the first interference were different from

those in the present one, Corte being omitted here.

It is urged by Meitzner that “it is inequitable to find

Meitzner et al. estopped after finding Mindick et al., an-

other junior party, not to be estopped,” and that “[i|t

is immaterial that Meitzner et al. is junior to Mindick et

al.” We do not agree. First, Mindick and Svarz were

not “another junior party” in the first proceeding, but

the senior party, since, as noted by the board, “the

decision of the Primary Examiner granting Corte’s mo-

tion |to shift the burden of proof| was clearly erroneous

inasmuch as at the same time the Primary Examiner

dissolved the interference.” Second, even if Corte were

the senior party in the first proceeding, this would be

of no avail to Meitzner. Only estoppel against a party

and in favor of the opponent is ancillary to the question

of priority. Bechtold v. Lanser, 23 CCPA 1051, 82 F.2d

415, 29 USPQ 130 (1936). The estoppel against Mindick

suggested by Meitzner would not be “in favor of” Meitz-

ner, but rather “in favor of” Corte.

In view of the foregoing, we need not reach the other

issues raised before the board.

It is argued by Meitzner that “misrepresentations” by

Mindick in ex parte prosecution of their patent applica-

:

44a

tion and in their actions before the Board’ render them

a party with “unclean hands,” and thus they should not

be allowed to rely on the equitable doctrine of estoppel.

However, this issue was not raised before the board and,

therefor, is not timely raised now. See Vogel v. Jones,

486 F.2d 1068, 179 USPQ 425 (CCPA 1973); Triggiana

v. Gens, 482 F.2d 1381, 179 USPQ 236 (CCPA 1973).

Fraud

It is alleged by Meitzner that the Mindick patent “con-

tains false data the effects of which were to misrepresent

and/or conceal the material facts and to mislead the PTO.”

Specifically, it is alleged that misrepresentations in the

disclosure of test # 585 (which involved a bulk polymeri-

zation process) as a dispersion polymerization process

and in the disclosure of certain chloromethylation cata-

lysts (which were in fact zine chloride) as aluminum

chloride constitute “fraud and deception practices by

Mindick et al. upon the Patent and Trademark Office.”

It is clear, however, that the fraud issue was not

raised before the board, notwithstanding that the facts

upon which the allegation of fraud is based were developed

during proceedings before the board. Moreover, the rea-

sons of appeal set forth by Meitzner do not allege fraud

as a basis of error in the board’s decision. Accordingly,

the issue is not properly before us. Goodrich v. Harmsen,

58 CCPA 1144, 442 F.2d 377, 169 USPQ 553 (1971). See

Vogel v. Jones, supra; Triggiana Vv. Gens, supra.

Attorney’s Fees and Costs

Both parties have argued that they should be awarded

attorney’s fees and costs. Basis for the award advanced

7It is also argued by Meitzner that “[n]o corrective notations

[to a table submitted to the board] have been made by Mindick

et al. to this Court either.”” However, since, as stated by Meitzner,

the “misrepresentations” are revealed in Svarz's testimony and

this is of record, such “corrective nctations” are not needed.

45a

by Mindick is “[t]he unconscionable action of Meitzner

in subjecting the assignee of the Mindick and Svarz pat-

ent to an interference where the work initially relied

upon by Meitz::2r was known to have been abandoned.”

Basis for the award advanced by Meitzner is the fraud

on the PTO allegedly perpetrated by Mindick in obtaining

his patent.

Generally, each party should bear his own costs of

litigation, including attorney’s fees. Alyeska Pipeline

Service Co. v. Wilderness Society, 421 U.S. 240, 257

(1975). However, there are exceptions. Thus, where a

statute or an enforceable contract so provide, attorney’s

fees are recoverable. Fleischmann Distilling Corp. v.

Maier Brewing Co., 386 U.S. 714, 153 USPQ 432 (1967).

Attorney’s fees have been awarded to a successful party

“when his opponent has acted in bad faith, vexatiously,

wantonly, or for oppressive reasons, or where a successful

litigant has conferred a substantial benefit on a class of

persons and the court’s shifting of fees operates to spread

the cost proportionately among the members of the bene-

fitted class.” (Footnotes omitted.) F. D. Rich Co. v. In-

dustrial Lumber Co., 417 U.S. 116, 129-30 (1974). We

are not persuaded that the record before us justifies an

exception to the general rule.

It is urged by Mindick that we consider our position

in Reddy v. Dann, 529 F.2d 1347, 188 USPQ 644 (CCPA

1976), and hold that “this Court is empowered to award

attorney’s fees uncer [35 USC 285°] in exceptional in-

terference cases. However, we adhere to the statement

in that case that “[sjection 285 . . . is clearly inapplicable

to this court.” Jd. at 1349, 188 USPQ at 645. ms a

§§285. Attorney fees.

The court in exceptional cases may award reasonable at-

torney fees to the prevailing party.

46a

It is pointed out by Mindick that “28 USC 1912"!

specifically authorizes a court of appeals to make [an

award of attorney’s fees] as part of the ‘just damages’

which may be awarded in the Court’s discretion, and 28

USC 1927 '*! authorizes any court of the United States

to assess the excess costs occasioned by unreasonable and

vexatious proceedings against the attorney responsible for

them.” However, 28 USC 1912 only applies to “the Su-

preme Court or a court of appeals,” and this court is

not a “court of appeals” for purposes of that statute.”

Although 28 USC 1927 is applicable to proceedings before

this court,’* we are not persuaded that such proceedings

instituted by Meitzner have increased the costs unreason-

ably and vexatiously, as required by the statute."* We

®§ 1912. Damages and costs on ffirmances.

Where a judgment is affirmed by the Supreme Court or a

court of appeals, the court in its discretion may adjudge to the

prevailing party just damages for his delay, and single or

double costs.

10 § 1927. Counsel's liability for excessive costs.

Any attorney or other person admitted to conduct cases in

any court of the United States or any Territory thereof who

‘so multiplies the proceedings in any case as to increase costs

unreasonably and vexatiously may be required by the court

to satisfy personally such excess costs.

11 Compare 28 USC 1913 with 28 USC 1926.

12 Indirectly, attorney’s fees could be included in determining

“excessive costs” for purposes of this statute.

131t is argued by Mindick that the deposition of Dr. Harold

Weaver (a chemist “in Technical Sales and Technical Sales Develop-

ment in ion exchange resins” of the assignee of Meitzner at the time

the present invention was made) shows that Meitzner had “aban-

doned” the work relating to swelling solvents, and, thus, that they

are not entitled to a patent directed either to the use of swelling

solvents or to the generic solvent counts of the present invention;

and that subjecting Mindick to the present proceeding, in view of

the “abandonment,” warrants the award of attorney’s fees. How-

ever, we note that Weaver’s deposition merely shows that “it was

very definitely the feeling of the inventors” that use of a non-

swelling solvent “gave us something that distinguished it to a much

47a

note, in this connection, the background of this case set

forth above, which shows that in the earlier proceedings

there was considerable confusion within the PTO itself.

Taxation of Printing Costs

Meitzner has moved to assess printing costs against

Mindick for the portions of the transcript requested by

Mindick. These can be divided into two groups: (1)

those portions relating to the estoppel issue, and (2)

those portions relating to the Mindick request for an

award of attorney’s fees and costs.

In determining the taxation of printing costs for por-

tions of the transcript requested by appellees, appellants

are only required to pay for so much of the transcript

as is necessary for the court to decide the issues they

raised on appeal; the costs of material needed for the

court to make a decision on the issues raised by appellees

and of unnecessary materials should be taxed against ap-

pellees. Myers v. Feigelman, 59 CCPA 834, 455 F.2d

596, 172 USPQ 580 (1972). Those portions of the tran-

script relating to the estoppel issue, which was raised by

Meitzner in their Notice and Reasons of Appeal, are

considered necessary for the court’s decision on this issue.

Accordingly, the cost thereof is to be paid by Meitzner.

The portions of the transcript requested by Mindick re-

lating to their request for an award of attorney’s fees

and costs '* are to be paid by Mindick.

greater extent over the prior art than did anything prepared by the

use of toluene or other swelling solvents,” and that this was “the

basis for leaving toluene out of the [Meitzner] application.” We

agree with Meitzner that the application is broad enough to cover

swelling solvents and that “exclusion of an express disclosure of an

inferior mode” does not constitute abandonment under the circum-

stances of this case.

‘* Items 9 and 13-17 of the listing filed with the court on March

19. 1976.

en

48a

The decision of the board awarding priority to Min-

dick on counts 1-10 is affirmed.

AFFIRMED

49a

UNITED STATES COURT OF CUSTOMS AND

PATENT APPEALS

Thursday, April 28, 1977

Before: Markey, Chief Judge Rich, Baldwin, Lane and

Miller, Associate Judges; Judge Kashiwa, United States

Court of Claims and Judge Richardson, United States

Customs Court.

PETITIONS FOR REHEARING

No. 76-577, ERICH F. MEITZN®R and JAMES A.

OLINE v. MORRIS MINDICK and JERRY J. SVARZ.

The petition for rehearing is denied.

* * * *

April 28, 1977