take the position that their work antedates the Cook application, admitting that the Cook patent discloses the subject matter of plaintiffs' claims. (Defendant's brief, p. 19.) As pointed out heretofore, plaintiffs' application here in action was filed on September 9, 1942. Cook et al., it will be recalled, filed their application,- which matured into patent No. 2,344,392- on November 8, 1941, as a continuation of an application filed July 11, 1941.
Plaintiff Asseff in his testimony identified Plaintiffs' Exhibit No. 23 as establishing the claims here in suit, referring specifically to the Code number 601-302 as first showing the preparation of the zinc capryl alcohol dithiophosphate. The plaintiffs' witness in answer to a question stated that this is the first time at which that particular compound was made. (Trans. pp. 66 and 67.) An examination of this exhibit discloses that this compound was first prepared on September 11, 1941 and tests started and completed between that date and October 1, 1941. It is observed from plaintiffs' brief (p. 21) that the statement is made with reference to the 'use in a lubricant of the zinc salt of the acidic reaction product of capryl alcohol and P2S3' that 'such invention was completed by Asseff with his engine tests completed October 3, 1941.'
It has been established that the Cook application filed on November 8, 1941, was a continuation of the application filed on July 11, 1941. It so states on its face. (p. 2, col. 2, lines 29-31). Legally, therefore, the effective date of the Cook patent is July 11, 1941 since the two applications cover the same subject matter. Godfrey v. Eames, 1 Wall. 317, 68 U.S. 317, 17 L. Ed. 684; Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 23 L. Ed. 952. That the parent application's date is carried over to the continuing application or patent is well established. Hunt Co. v. Mallinckrodt Chemical Works, D.C., 72 F.Supp. 865; In re Lotz' Application, 57 App.D.C. 402, 17 F.2d 1008. Plaintiffs have therefore not only failed to carry the burden of proof to establish prior reduction to practice but their evidence, in the light of the above, requires a finding for the defendant unless plaintiffs' claim is not covered by the Cook applications. An examination of the Cook parent application (P's. Ex. 43) discloses that it embraces all the components of the reaction product defined in the plaintiffs' claims even to the preference for zinc as a heavy metal, that the actyl alcohol radical is the preferred alkyl radical and that capryl alcohol should be used. It follows that plaintiffs' claims, and particularly Claim Five, are unpatentable over Cook.
One further composition was described by plaintiff Asseff as a composition falling within the terms of Claims One and Five. This compound identified as Code number 601-310 is included in plaintiffs' Exhibit No. 24. The compound was made on September 18, 1941 and was 'observed for short periods of storage' but no engine tests were ever run on this compound (Trans. pp. 57 and 69). While the case of Knutson v. Gallsworthy, 82 U.S.App.D.C. 304, 164 F.2d 497, 498, raises a question as to whether this action constituted a 'reduction to practice', it is unnecessary to decide this point since the preparation itself was more than two months subsequent to the filing of the parent Cook application, and was, accordingly, covered by the prior disclosure of Cook as set out heretofore.
It appearing from the facts and findings set forth to this point that plaintiffs have failed to prove priority over Cook by establishing plaintiffs' Claims One and Five, it remains to consider the defendant's rejection of plaintiffs' Claims Nine through Twenty-four in the light of the Cook patent.
Plaintiffs' Claims nine, ten and eleven define the so-called zinc dicapryl dithiophosphate compound plus a separate detergent of the class containing a metal atom directly attached to an element of the class consisting of oxygen and sulphur. In Claim eleven the compound is described as a calcium salt of a petroleum sulfonic acid. It will be noted, however, that the Cook et al. patent teaches that the dithiophosphates may be used in combination with detergents. The heavy metal salts of diamylphenol sulfide disclosed in the Cook patent (p. 1, col. 2, line 49) respond to the definition of the separate detergent set out in plaintiffs' claims nine and ten and since that same material is disclosed in the parent Cook application, that disclosure is prior art insofar as plaintiffs are concerned. Relative to plaintiffs' claim eleven, calcium petroleum sulfonate used as a detergent is old in the Wilson patent (p. 1, col. 2, line 10) and therefore the use of that compound with the dicapryl dithiophosphate of Cook is within the skill of the art.
Plaintiffs' claims fifteen and sixteen define the basic compound of claim one, heretofore set out on several occasions, plus a 'separate oil-soluble organic corrosion inhibitor' (claim sixteen) defined in claim fifteen as 'halogen bearing'. Halgoen bearing compounds are shown in Wilson (p. 6, col. 1, line 1) and the use of such compounds admixed as stated by Cook is non-patentable.
Plaintiffs' claim claims seventeen to twenty-one describe the basic product,-'the zinc dicapryl dithiophosphate compound' combined with the detergent of claim nine and the corrosion inhibitor of claim sixteen. However, it will be recalled that the Wilson patent teaches those skilled in the art to utilize a plurality of additive agents and the parent Cook et al. application disclosed that specific heavy metal salts of the dithiophosphoric esters disclosed therein should be used with other materials. There is, therefore, nothing inventive in these claims.
Plaintiffs' claims twenty-two, twenty-three and twenty-four, defining species of compositions under claim nine, include as the separate detergent a 'metallic phenates' (claims twenty-two and twenty-three), or 'magnesium phenate' (claim twenty-four). Phenates as additive agents are old in both the McNab (called 'phenolates' therein) and Wilson patents. The inclusion of this material, old in the art, with the basic compound of the Cook patent is not new or inventive.
The findings of the Court having established that the plaintiffs' claims fail to antedate the anticipatory effect of the Cook et al. patent, which anticipates all of the claims of the plaintiffs herein; and that plaintiffs' claims nine through twenty-four lack invention and patentability over McNab, Salzberg and Wilson, it is unnecessary for the Court to pass upon the defendant's contention concerning the plaintiffs' failure to meet statutory requirements relating to particularity and distinctness.
Judgment for the defendant. Counsel will submit the necessary order.
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