Voisinet v. Coglianese

455 F.2d 1064, 59 C.C.P.A. 958
CourtCourt of Customs and Patent Appeals
DecidedMarch 9, 1972
DocketNo. 8595
StatusPublished
Cited by11 cases

This text of 455 F.2d 1064 (Voisinet v. Coglianese) 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
Voisinet v. Coglianese, 455 F.2d 1064, 59 C.C.P.A. 958 (ccpa 1972).

Opinion

Lane, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention of the sole count in issue to Coglianese et al. (Coglianese). Voisinet is involved on an application1 filed August 13, 1962, while Coglianese is involved on an application2 filed March 15,1962, which was a continuation-in-part of an application3 filed April 12, 1961. The board accorded the party Voisinet the date of April 11, 1961, for conception and actual reduction to practice of the invention of the count, but awarded appellees priority 4 on the holding that they were entitled to the earlier date of December 19,

1960, for conception and actual reduction to practice. We affirm the decision of the board.

The count reads as follows:

A polyurethane foam prepared in the presence of a substantially petroleum hydrocarbon insoluble pine wood resin.

It is directed to a low density, rigid polyurethane foam which has good strength and low thermal conductivity, and which is relatively inexpensive to prepare. Polyurethane foams are conventionally prepared by reacting an organic polyol with a polyisocyanate and expanding the product by means of a blowing agent. In this invention, a pine wood resin which is “substantially” insoluble in petroleum hydrocarbons is incorporated into the reaction mixture as a substitute for a portion of the polyol with the result that cost is reduced while desired strength and insulation characteristics are preserved.

The Board of Patent Interferences found that it was undisputed by Voisinet that in the fall of 1960 Coglianese prepared a polyurethane foam containing “Belro” resin and had it tested for thermal conductivity and compressive strength. Coglianese drafted a report dated December 19, 1960, in which he indicated that the Belro foam was advantageous in its lower cost of production and good strength and insulating properties. The board accorded this latter date to Coglianese on the findings that the Belro foam was an embodiment upon which the count reads, that the foam was adequately tested, and that the party Coglianese appreciated the success of the experiments with the Belro foams.

[960]*960Appellant contends that the count does not read on a polyurethane foam prepared with Belro resin and urges that Belro, although a pine wood resin, is not substantially insoluble in petroleum hydrocarbons. It is further contended that the test for compressive strength was inadequate. For these reasons, appellant urges that the evidence was insufficient to establish conception and reduction to practice as of December 19, 1960, and it is to these two issues that we direct our attention.

Is Belro a Substantially Insol/dble Resin?

Appellant urges that Coglianese never attempted to prove the solubility characteristics of Belro even though it was their burden to so do. However, appellant introduced evidence to the effect that Belro is 52% gasoline (a mixture of petroleum hydrocarbons) insoluble. This evidence consisted of a product information bulletin put out by Hercules, the manufacturer of the resin and its supplier to Coglianese, which specified the gasoline insolubility of the product. In view of the fact that appellant admits the accuracy of the 52% figure, we have no difficulty in starting from that point. The Coglianese applications each disclose Belro to be 60% gasoline insoluble. In their brief before this court, appellees suggest that the 60% figure was obtained from Hercules product information bulletins issued subsequent to the one-on which appellant relies and point to the testimony on cross-examination of Dr. Gregory, a Hercules employee called by appellant, which indicates that it is possible that certain shipments of Belro may have had insolubility values as high as 60% or even 70.%. However, the board found that the evidence led to the conclusion that Belro is 52% insoluble, Coglianese does not seriously challenge that finding and argues for affirmance assuming 52%, and Voisinet agrees that that is the insolubility value.

The question becomes whether or not 52% is substantial in the context of gasoline insolubility of a pine wood resin. The parties focus on Gregory’s testimony, appellant relying on the following portion from redirect examination:

By Mr. Logsdon [counsel for appellant]:
RDQ 218 Doctor, is or is not tlie difference in petroleum hydrocarbon insolubility the basis for separating “Belro” and “Vinsol”?
A Ves, it is.
RDQ 219 Was it so in 1961?
A Ves.
RDQ 220 Do you or do you not consider the “Vinsol” product sold by Hercules to be substantially petroleum hydrocarbon insoluble?
A yes.
* * *
[961]*961By Mr. Logsdon.:
BDQ 221 Do you or do you not consider the “Belro” product sold by Hercules to be substantially insoluble in petroleum hydrocarbons?
A In the context of your question, no, I do not consider it to be substantially insoluble in petroleum hydrocarbons.

Appellees ¡assert that in context all Gregory meant was that Belro is relatively less gasoline insoluble as compared to Vinsol, the resin used by appellant and one which has a gasoline insolubility of about 83%. Coglianese stresses the following responses made by Gregory on cross-examination:

XQ 169 Have you had occasion to look up the meaning of the word “substantially” in the last few weeks?
A No, I have not.
XQ 170 There was considerable use of it in your direct examination this morning and I just wondered what “substantially” means to you. Would you tell me?
A You are asking what “substantially” means to me?
XQ 171 In the context of the testimony that was given this morning.
A “Substantially insoluble” would mean to me that less than a majority of the material would be soluble; “substantially soluble,” that more than 50 percent would be soluble.

Regarding this testimony, Voisinet contends that Gregory was offering a meaning for “substantial” in a general sense, but that in the context of gasoline insolubility, his view was that Belro was not substantially gasoline insoluble.

The board regarded the statements by Gregory as contradictory and resolved the issue as follows:

We are of the opinion that 52 percent, under the circumstances of this case, is a “substantial” proportion and consequently, we are of the opinion that Belro is a substantially petroleum hydrocarbon insoluble pine wood resin and reads on the count.

We agree with the board that 52% gasoline insolubility may properly be characterized as substantial. Equating “substantial” with greater than 50% is a reasonable construction of the term in this case and is one which came to the mind of appellant’s witness when he was asked what the term means.

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455 F.2d 1064, 59 C.C.P.A. 958, Counsel Stack Legal Research, https://law.counselstack.com/opinion/voisinet-v-coglianese-ccpa-1972.