Home/Customs and Patent Appeals/Raiche v. Foley

Raiche v. Foley

113 F.2d 497, 27 C.C.P.A. 1380, 46 U.S.P.Q. (BNA) 224, 1940 CCPA LEXIS 140
CourtCourt of Customs and Patent Appeals
DecidedJuly 8, 1940
DocketNo. 4307
StatusPublished
Cited by3 cases

This text of 113 F.2d 497 (Raiche v. Foley) 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
Raiche v. Foley, 113 F.2d 497, 27 C.C.P.A. 1380, 46 U.S.P.Q. (BNA) 224, 1940 CCPA LEXIS 140 (ccpa 1940).

Opinion

Garrett, Presiding Judge,

delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office, reversing the decision of the Examiner of Interferences, in an interference proceeding of which the latter tribunal said:

The subject matter in issue is a process which, as disclosed by the parties, finds specific application in the manufacture of integral one-piece distensible bag catheters.

The interference, which embraces seven counts (all being method counts), was declared between a patent No. 2,043,630, issued to Raiche June 9, 1936, upon application filed November 9, 1935, and an application of Foley, filed October 1, 1936. The counts are identical with [1381]*1381claims 5 to 11, inclusive, of the Raiclie patent and were set forth as claims 5 to 11, inclusive, in Foley’s application as filed.

Since Foley’s application was filed after the patent to Raiche issued, the burden rested upon Foley to establish priority beyond a reasonable doubt.

A phase of the case relating to a question of practice and not involving the merits was brought before us by a former appeal and decided. See Raiche v. Foley, 26 C. C. P. A. (Patents) 1235, 103 F. (2d) 920.

There has been injected into the present appeal a question relating to Raiche’s right to amend his original reasons of appeal after the same had been perfected in the Patent Office. The question so injected was specially briefed by counsel for the respective parties, at the request of the court, it being determined that it would be taken in connection with the argument upon the merits, the necessity of its consideration by us being dependent upon the conclusion wdiich we should reach respecting the merits upon the basis of the original reasons.

The patent to Raiche bears the broad title “Construction of Rubber Articles.” The application of Foley is entitled “For Method of Making Rubber Articles.”

The counts are quite broad, and the specific application of them to distensible bag catheters is determinable only from an inspection of the respective specifications. The Examiner of Interferences quoted counts 1 and .2 as typical, and we follow his example in that respect:

1. The method, of forming- articles with wall recesses, comprising the steps of coating a form, placing a passageway form on the coated form, coating the first and second forms, locally treating the coated area about the end of the passageway form to prevent surface adhesion, again coating both forms and their coats, and removing ■ both forms, whereby an integral article having a recess with a communicating passageway is obtained.
2. The method of forming articles with wall recesses, comprising the steps of dipping a form in coating solution, placing a passageway form on the coated form, dipping the first and second forms, locally treating the coated area about the end of the passageway form to prevent surface adhesion, again dipping both forms and their coats, and removing both forms, whereby an integral article having a recess with a communicating passageway is obtained.

It will be observed that there is no mention of rubber in either of the above counts. It may be stated that the same is true of all the other counts except count 7, which reads:

7. The method of forming articles, comprising coating a form with a solution of rubber material, to form an initial coat, treating a local area of the initial •coat to prevent surface adhesion, and again coating the coated treated form with a solution of rubber material, whereby an integral article with a recess results.

The board did not quote any count.

[1382]*1382Both, parties took testimony. Wé do not find in either of the decisions below any specific reference to the dates claimed in the respective preliminary statements. The Examiner of Interferences reviewed only the testimonial record filed on behalf of Foley, being of the opinion that it was unnecessary to consider the Baiche record in view of his holding that Foley “failed to establish inventive acts overcoming the record date” of Baiche.

The board held that Foley “had.a conception as early as 1934” and that, in letters of March 25, 1935 and April 4, 1935 (hereinafter more particularly set forth) he “suggested the steps of the process.” The board did not assign any date for Foley’s reduction to practice, nor did it discuss the question of Foley’s diligence. It may be said also that it did not discuss Baiche’s record.

It appears that Dr. Foley is a surgeon specializing in the field of urology. In his preliminary statement he claimed conception of the invention “sometime in the early part of 1929” with reduction to practice “on'or about September 15, 1931.” It is clear that these claimed dates must be disregarded because whatever work Dr. Foley may have done at those times did not involve the process required by the counts.

The following statement from the decision of the Examiner of Interferences, which was not questioned in the decision of the board, is helpful in elucidating the history of Dr. Foley’s activities:

It appears that in connection with certain cystoscopie procedures some difficulty is experienced in controlling post-operative hemorrhage and that for this purpose Foley attached a rubber bag to the lower end of the conventional catheter, which bag was inflated by means of a small auxiliary tube. The small inflated bag, pressing against the affected area, serves to check and control the flow of blood. Catheters of this type were not made commercially prior to 1935, and Foley made those which he used by an assembly method, thin rubber sheeting being cemented to the lower portion of a conventional catheter in the manner described in Foley’s exhibit A.

We may say at this point that we liave no doubt that Foley, probably as early as the dates named, recognized the desirability of having an improved catheter for use in his special field of practice, and that, from time to time, he gave some study and attention to the problem of producing such an instrument. His early efforts were to produce one by the “assembly” method, that is, by cementing rubber sheeting to the lower portion of a conventional catheter, and, even after he had learned, in 1932, of the use of liquid latex for forming dipped rubber articles, he continued until 1935 trying to find a commercial manufacturer who could make a satisfactory catheter by the assembly method. This fact was regarded as significant by the Examiner of Interferences, who commented as follows:

If, in fact, Foley bad seriously contemplated the making of bemostatie bag catheters by a dip method from latex or any other suitable form of rubber it does [1383]*1383not seem reasonable that be should have failed to include such suggestion in these negotiations.

As lias been stated, the board awarded Foley conception “as early as 1934,” and the brief on his behalf before us does not seriously claim any date earlier that June 1984. The award by the board and the claim of the brief is based upon the testimony of Dr. Ward L. Beebe and Dr. Phillip F. Donahue. The Examiner of Interferences made no specific reference to this testimony.

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Bluebook (online)
113 F.2d 497, 27 C.C.P.A. 1380, 46 U.S.P.Q. (BNA) 224, 1940 CCPA LEXIS 140, Counsel Stack Legal Research, https://law.counselstack.com/opinion/raiche-v-foley-ccpa-1940.