[3] In the early case of Mason v. Hepburn, 13 App. D. C. 86, the doctrine of equitable estoppel based on suppression and concealment of an invention following its reduction to practice was appropriately formulated. Numerous applications, as well as misapplications, of that doctrine have been set forth through the years, but it remains a fundamental principle that mere delay in filing will not suffice, in itself, to defeat the rights of the first inventor. A party seeking to succeed by invoking applicability of the doctrine must affirmatively establish that the elements of concealment and suppression are present in the facts of the particular case under consideration. Requisite proof is essential and it cannot be supplied by an improper over-indulgence in conclusions warped by undue presumptions and inferences.

In its simplest form, the question here may be presented as follows: What evidence of suppression, concealment (and/or abandonment) has the appellant placed before us to warrant a holding that Smith is now estopped from being adjudged, as a matter of fact and law, the first inventor and, as such, entitled to prevail?

In the first place, appellant directs attention to Smith's admission (against the interest of the party Smith) that a reduction to practice was established in 1932; that a patent application was at that time in existence, though no claims were then drawn; and that as the invention disclosed in Smith's application of 1945 is not patentably different from that which Smith possessed in 1952 or thereabout, the long delay in filing is inexcusable and amounts to concealment and suppression. Further, appellant suggests that the situation relative to the Warren patents, aforementioned, can have no bearing whatever on Smith's failure to submit his completed application. It is also suggested by appellant that Smith's allegation to the effect that he was endeavoring to solve practical difficulties in the operation of his device cannot be used as an affirmative defense for such long delay, especially when no such improvements are evidenced in the involved invention. Taking into account the admission against Smith's interest, the appellant thus concludes that Smith clearly suppressed and concealed his invention in a manner not sanctioned by law.

[4] Considering the period from Smith's conception until 1938, the established date of reduction to practice, it is entirely clear that Smith was actively engaged in repeated attempts to persuade manufacturers to produce his device. Smith was not concealing or suppressing his alleged invention during this time but, on the contrary, was acclaiming the benefits thereof to those who he hoped would manufacture it. While Smith might have filed his application during the period presently being considered, the fact that he did not do so is not evidence in support of appellant's position. Whatever reason Smith may have had in mind for withholding his application on an invention which he deemed to be satisfactorily demonstrated, we do not know, and

while we might speculate on the subject, it is not becoming to us to violate the prevailing body of law and conclude that such delay, in and of itself, prevents Smith from being adjudged the first inventor in law.

With regard to Smith's conduct following actual reduction to practice in 1938, as awarded herein, we are not impressed with that inventor's allegation that, except for his period of disability, he was actively engaged in attempting to promote the instant invention. We are equally unimpressed with the allegation that Smith was doing all in his power to confer the benefits of his invention upon the public at large. It appears to us that Smith was practically effortless in this period insofar as a showing from the exhibits would indicate. Whatever influence the late war had upon Smith's failure to file a patent application on a completed invention, we can only guess, and while our unexpressed conclusions in this respect might not be justified, the fact remains that the law supports Smith's right to priority. Appellant has not proven by a preponderance of evidence that Smith concealed and suppressed the invention (nor abandoned the same, although we do not believe that appellant seriously contended the affirmative of such result), and we are manifestly unwilling, on the facts of this case, to allow ourselves to substitute what might, at first appraisal, be a clearly warranted presumption in place of the direct proof required by law. In summarizing, it is well to repeat that a showing of concealment or suppression is not made out by merely establishing the fact of an extended delay in applying for a patent upon an invention previously reduced to practice.

[5] Smith has argued that the doctrine of equitable estoppel has no application until and unless there is evidence of the fact that the party alleged to have concealed or suppressed an invention was incited to activity as a result of being appraised that a rival had entered the field with respect to the same invention. This view was supported by the board in its decision. We are not necessarily in agreement with such reasoning. Such a condition is not an absolute prerequisite to proper application of the doctrine, though the existence of such a circumstance carries with it persuasive value. In a proper case, we would not hesitate to apply the doctrine where the proof indicates deliberate suppression and concealment without more. In the instant case, appellant fails to show that Smith was "spurred into activity" by knowledge of appellant's work. Such factor has been taken into consideration in our study of the case.

For the reasons hereinbefore indicated, the decision of the board of Interference Examiners is affirmed.

WORLEY, J., dissents.

JACKSON, J., retired, recalled to participate herein in place of GARRETT, C. J.

679 O. G. 773; 41 CCPA 746; 208 F. (2d) 484; 100 USPQ 49

IN RE BRIGHT (No. 5996)

PATENTS

EX PARTE CASES

1. APPEALS TO COURT, BRIEFS-ISSUES DETERMINED Applicant's brief sets forth form of claim with statement that, for purposes of appeal, appealed claim may be read as though it followed such form; however, so far as form of claim is concerned, court must consider what Board had before it; yet, inasmuch as form indicates interpretation which applicant placed upon appealed claim, it is reproduced in opinion.

United States Court of Customs and Patent Appeais,
November 24, 1953

APPEAL from Patent Office, Serial No. 45,903

[Modified and remanded.]

Dos T. Hatfield (Rowland V. Patrick and H. L. Kirkpatrick of counsel) for appellant.

E. L. Reynolds (J. Schimmel of counsel) for the Commissioner of Patents.

[Oral argument November 4, 1953, by Mr. Patrick and Mr. Schimmel]

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Associate Judges

GARRETT, Chief Judge, delivered the opinion of the court: Appellant here seeks review and reversal of the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting all the claims, three in number, of appellant's application for patent, serial No. 45,903, filed August 24, 1948, for "Methods of Producing Elastic Adhesive Sheets." The claims read:

3. The method of adhering a pressure-sensitive adhesive material soluble in a solvent chosen from the group consisting of volatile hydrocarbon and halogenated hydrocarbon solvents to a self-supporting film consisting essentially of a solid ethenoid polymer which is insoluble in the solvents of said group under normal conditions, and which corresponds to the empirical formula:

R1

(-CH2-CH2-)x (-CH-C—),

R3 R2

where R1 is hydrogen or an alkyl group; and R2 and R. are mono-valent radicals falling within the group hydrogen, alkyl, phenyl, substituted phenyl, vinyl, substituted vinyl; and the ratio x: y exceeds 1:5; comprising applying said pressuresensitive adhesive material to said film in a solvent of the said group and subjecting the applied solvent-carried adhesive and film to a temperature above the threshold of solubility of the ethenoid polymer in the chosen solvent but below the melting point thereof and driving off said solvent.

5. The method as claimed in claim 3, wherein the ethenoid polymer is molecularly oriented and the temperature to which the applied solvent-carried adhesive and film are subjected does not exceed 170° F.

6. The method as claimed in claim 5, wherein the ethenoid polymer is polyethylene and the pressure-sensitive adhesive material comprises polybutene.

It is noted that claim 6 is dependent on claim 5, which in turn is dependent on claim 3.

Claim 3 is not happily phrased. This fact is recognized in the brief for appellant which states, inter alia:

In the claims the ethenoid polymer is defined by a complicated chemical structure to cover other ethenoid polymers besides the species polyethylene. However, for the purposes of this appeal all the claims may be considered as if they were directed to polyethylene alone, since the Patent Office has raised no question of the propriety of the broader definition, and if the claim is allowable for polyethylene, it is allowable in the broader form.

The brief then sets forth a form of claim with the statement that for the purpose of this appeal claim 3 may be read as though it followed such form.

Appellant's suggestion that if the claim is allowable for polyethylene it is allowable in the broader form does not impress us as logical. So far as this case is concerned, it is conceded that if claim 3 be found allowable, claims 5 and 6 are allowable, but it is not true that patentability of the broad claim would necessarily follow from a finding of patentable matter in the specific claims.

[1] So far as the form of the claim is concerned, we must consider what the board had before it. However, inasmuch as the form indicates the interpretation which appellant himself placed upon claim 3, we here reproduce it:

The method of adhering a pressure-sensitive adhesive material soluble in a solvent chosen from the group consisting of volatile hydrocarbon and halogenated hydrocarbon solvents to a self-supporting film consisting essentially [of polyethylene] which is insoluble in the solvents of said group under normal conditions; comprising applying... said pressure-sensitive adhesive material to said film in a solvent of the said group and subjecting the applied solvent-carried adhesive and film to a temperature above the threshold of solubility of the [polyethylene] in the chosen solvent but below the melting point thereof and -driving off said solvent.

The Primary Examiner rejected the claims on three distinct and separate grounds, to wit:

(1) As unpatentable over patent No. 2,395,419, issued to James A. Mitchell February 26, 1946;

(2) As unpatentable over patent No. 2,429,861, issued to Richard G. Woodbridge III October 28, 1947;

(3) As unpatentable, in view of the Woodbridge patent, over patent No. 2,462,977, issued to Kitchen & Dyke as joint inventors, March 1, 1949.

The Board of Appeals of the Patent Office disagreed as to both the second and third grounds, saying (after some discussion of the two

patents named in those grounds), "We will, therefore, not sustain the rejection of the claims on Woodbridge or on Kitchen et al. in view of Woodbridge."

By reason of the foregoing action of the board, the brief of the Solicitor for the Patent Office states:

***, the sole issue before the Court is whether error was committed by the Board of Appeals in affirming the rejection of the claims as unpatentable over Mitchell.

The board, in fact, related certain matters from the Woodbridge patent immediately following its statement that it would not sustain the Primary Examiner's rejection over the Woodbridge patent, nor that on Kitchen et al. in view of Woodbridge. The matters so related, however, do not seem to us to bring Woodbridge into the case as a reference and we do not further consider the Woodbridge patent.

As we understand claim 3, it is required that there be to begin with a basic physical element, or backing material with a pressure-sensitive adhesive material affixed thereon in which there is formed a composition which constitutes what, in the claim, is called a "self-supporting film," or a "solid ethenoid polymer."

Another requirement is that the "pressure-sensitive adhesive material" be soluble in a solvent and that the "self-supporting film" be insoluble in such solvent under normal conditions. The solvent itself is required to be one "chosen from the group of volatile hydrocarbons and halogenated hydrocarbon solvents." The Primary Examiner construed "normally insoluble" as meaning “insoluble at ordinary room temperature," and this construction apparently conforms to appellant's specification. In claim 6, the "self-supporting film" required by claim 3 is stated to be polyethylene, and the "pressure-sensitive adhesive,” also required by claim 3, is stated to comprise polybutene. No specifically named solvent is mentioned in any one of the claims, but toluene is specifically named in an example given in appellant's specification and that, we understand from the record and argument, is the particular solvent used by appellant.

The foregoing constitutes the materials upon which appellant's method operates.

The method itself-the subject matter for which the patent is sought-comprises three procedural steps, viz, (a) applying (the claim uses the term "adhering") the "pressure-sensitive adhesive material" [polybutene specific to claim 6] to the "self-supporting film" [polyethylene specific to claim 6]; (b) subjecting the film with the adhesive firmly fixed upon it to a temperature which, as limited in claim 5 does not exceed 170° F., but which is broadly defined in claim 3 as “a temperature above the threshold of solubility of the ethenoid polymer in the chosen solvent but below the melting point thereof;" and, (c) driving off said solvent.