Mattor v. Coolegem

530 F.2d 1391, 189 U.S.P.Q. (BNA) 201, 1976 CCPA LEXIS 182
CourtCourt of Customs and Patent Appeals
DecidedMarch 18, 1976
DocketPatent Appeal No. 75-616
StatusPublished
Cited by12 cases

This text of 530 F.2d 1391 (Mattor v. Coolegem) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mattor v. Coolegem, 530 F.2d 1391, 189 U.S.P.Q. (BNA) 201, 1976 CCPA LEXIS 182 (ccpa 1976).

Opinion

BALDWIN, Judge.

This is an appeal from the decision of the Patent and Trademark Office Board of Patent Interferences awarding priority to senior party Coolegem. The board concluded that junior party Mattor had not established an actual reduction to practice earlier than February 7, 1969, the date afforded Coolegem based upon his foreign priority document.1 We reverse.

The Invention

The invention herein is an electropho-tographic element produced by coating a conductive support with a dispersion of an organic photoconductor (OPC) in an electrically insulating binder.2 The sole count of the interference is as follows:

An electrophotographic element comprising a conductive support having coated thereon a photoconductive composition comprising an organic photoconductor and an electrically insulating binder, said photoconductor corresponding to the formula:

wherein A1 and A2 are phenylene or substituted phenylene radicals, X represents oxo, thio, dithio or sulfonyl, and R1, R2, R3 and R4 represent alkyl or benzyl radicals.

The Proceedings Below

As stated previously, senior party Coo-legem was afforded the benefit of the filing date of his British application, February 7, 1969, and took no testimony [1393]*1393to prove earlier reduction to practice. Mattor did, however, take testimony in an attempt to prove an actual reduction to practice prior to February 7, 1969.

Mattor testified that he conceived the invention in the summer of 1966,, at which time he tried to synthesize several organic compounds within the formula recited in the count which he felt would be photoconductive. After carrying out the synthesization steps, he was unable to perform the last step — the precipitation of a crystalline product — with some, but not all, of the compounds. None of the compounds was tested for photocon-ductivity at this time. Following this, his summer laboratory assistant left, and more pressing projects prevented further work until 1968 when he again was able to hire a summer laboratory assistant— Charlotte Loew.

Loew, Mattor and Larry Price, a coworker of Mattor, testified that in August 1968, Loew synthesized two formulations — N,N,N1,N1—tetrabenzyl dithiodianiline and N.N.N^N1 — tetrabenzyl oxydianiline, while Price synthesized N,N,N1N1 — tetrabenzyl sulfonyldianiline. These compounds all fall within the generic class of photoconductors of the count.

Loew and Price performed three tests employing the above compounds. They began by dissolving a small amount of each crystalline compound in a polystyrene solution, then coated a piece of paper with each solution and allowed the composite elements to dry. The first test, called a K & E test, involved placing a coated piece of paper in a K & E machine. The coated paper was charged with a static charge on the order of 400-600 volts while a pen recorder recorded the surface voltage as a function of time, first with the paper in the dark and then, after a fixed period of time, with the paper exposed to light.

A Caps test was next performed wherein the coated paper elements were placed in a Caps-Jeffries enlarger. The elements were exposed through an image-bearing original and subsequently developed using a standard toner formulation.

The final test, called a Fadeometer test, merely involved exposure of the coated papers to high intensity radiation for about thirty minutes to provide artificial aging. The papers were then examined for possible fade and yellowing.

The test results appear in Loew’s notebook. The K & E tests clearly indicate that the coated papers retained a static charge better in the dark than in the light, while the Fadeometer tests yielded samples which yellowed to varying degrees. Lastly, the Caps tests produced clear, legible images which were physically attached to appropriate pages in the Loew notebook. The notebook, however, contains no contemporaneous evaluation of these tests, nor did any witness corroborate Matter’s testimony that he recognized at that time that the formulations were in fact organic photoconduc-tors.

Appellant’s application, as originally filed, named both Mattor and Loew as co-inventors. Upon a motion pursuant to 37 CFR 1.45(b), Loew was removed as a co-inventor, and the application result-antly became that of Mattor as the sole inventor. Thus, the first issue that the board was called upon to decide was whether the record supports “the representations of fact made on Matter’s renewed motion to change the inventorship from Mattor and Loew to Mattor sole.” With respect to this issue, the board concluded that Loew was not a joint inventor, stating:

The genesis of the invention including the proposed utility of the compounds as photoconductors began with Mattor. In our opinion Loew was another pair of hands of Mattor and her work inures to his benefit. Her success in obtaining crystals of the oxy and dithio compounds involved nothing more, it appears, than routine experimentation; certainly the record shows no more than this. The compounds embraced by the counts are old compounds and are made by following classical chemical reactions. This is not denied by Coolegem; in fact we do not find specific methods for making [1394]*1394the compounds of the count in the involved application of either party. Presumably, there was nothing esoteric or abstruse in the reaction mechanism and Loew used nothing more than routine experimentation to obtain the compounds.

The further issue which faced the board was whether “the record established] [an] actual reduction to practice on behalf of Mattor prior to February 7, 1969, the effective filing date of Coole-gem.” The board reached the ultimate conclusion that Mattor failed to establish an actual reduction to practice before the critical date:

However, considering the remainder of the evidence as a whole, the record fails to establish an appreciation or conviction of success relative to the utility of invention of the count at the time the oxydianiline was tested, Bren v. Henshaw, 176 U.S.P.Q. 519 (CCPA 1973). Certainly, Loew, the summer employee did not appreciate the results of the tests nor did she have the qualifications to evaluate them. Price, who supervised Loew, made no evaluation of the results. The testimony of Mattor, the inventor, cannot be relied on since it is self-serving and cannot be given probative force even if it is uncontradicted and convincing unless it is supported by adequate corroboration. Tidewater v. Gillette, 124 U.S. P.Q. 245, 247, 248 (CA4 1959). In this case, adequate corroboration is lacking. The absence of contemporaneous reports to superiors or to patent counsel, contemporaneous comments attesting to some degree of success contributes to the total picture of a failure to establish actual reduction to practice.

OPINION

Coolegem challenges that the N,N,N1,N1-tetrabenzyl sulfonyldianiline prepared by Price and compositions prepared by Loew (N,N,N1,N1—tetrabenzyl oxydianiline and dithiodianiline) had the predicted structures. All evidence, however, is to the contrary.

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Bluebook (online)
530 F.2d 1391, 189 U.S.P.Q. (BNA) 201, 1976 CCPA LEXIS 182, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mattor-v-coolegem-ccpa-1976.