that the metal really is employed as a catalyst, since 'promoters' are customarily thought of as performing a catalytic function. Additionally, the Patent Office contends that since he uses an excess of metal, Winternitz would have remaining a portion of the metal 'unconsumed and reuseable', thus likening the metal to a catalyst, which normally is not consumed in the reaction it initiates.
With respect to the second ground of rejection, the Patent Office takes the position that Schlessinger, et al. disclose an electric arc process which uses the apparatus of Weintraub; that Weintraub states that he uses a 'good red heat'; that this heat is within the temperature range of applicant's claims; and that Weintraub's use of copper electrodes meets the requirements for the presence in plaintiffs' process of a Group Ib metal.
In response to the rejection upon Winternitz, the plaintiffs introduced evidence by which they sought to demonstrate that the Winternitz process was not in fact 'catalytic', and that Winternitz indeed produced metal halides as a necessary part of his reaction. The plaintiffs also sought to show that the word 'promoter' was used erroneously by Winternitz in his specification.
In response to the second ground of rejection, plaintiffs adduced testimony by Dr. Burg, co-author of the Schlessinger-Burg publication, by which plaintiffs sought to establish that the principal purpose of using an electric discharge was not to provide heat, but electrons, and that the reaction was essentially 'electric' in the sense that the energy of the electrons passing through the vapor caused the reaction to occur. Dr. Burg testified further that it would not have been reasonable to assume that the Schlessinger-Burg publication indicated operation at a 'red heat'. Finally, plaintiffs evidence sought to demonstrate that the copper electrodes used to produce the arc did not perform a catalytic function.
With regard to the rejection based upon Winternitz, the Court must find as a fact that the reaction of Winternitz is not really catalytic. From the disclosure as a whole it is indisputable that the finely divided aluminum participates directly in the reaction and thereby forms aluminum chloride. This is the exact antithesis of the language in the plaintiffs' claim, which specifies that halides of the Group Ib metals are not formed to any 'substantial extent' during the reaction.
The word 'promoter', as the Patent Office pointed out, customarily signifies an agent which performs a catalytic function. The Court finds, however, that the word as used by Winternitz only designates an agent which serves to 'promote' the reaction. This is exactly what the aluminum does. To accomplish this 'promotion', however, the aluminum must actively participate in the reaction by forming the very metal halide that plaintiffs describe as not being formed by their process is substantial amounts.
The Court must also agree with the plaintiffs' view as to the second ground of rejection. The Court finds that no basis whatever exists for thinking that the copper electrodes serve as catalysts in the electrical process. Similarly, it is clear from the testimony at trial that the electrical process is quite different in its theory and practice from a method employing heat. This view of the matter was inescapable after considering the testimony of Dr. Burg, who revealed that the electrical process was capable of producing only one gram of the desired product per day.
After reviewing the record and weighing the testimony, and after according the findings of the Patent Office every favorable presumption, the Court is compelled to hold that the rejection of the claims is wholly inconsistent with the evidence.
Accordingly, the Court will find for the plaintiffs and against the defendant, and will authorize the Commissioner of Patents to issue Letters Patent of the United States containing claims 2, 3, 4, 7 and 8 of plaintiffs' application.
The above Opinion contains Findings of Fact and Conclusions of Law.
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