Gray v. McAfee

SMYTH, Chief Justice. From a decision of the Commissioner of Patents in an interference proceeding, Gray appeals. The contest is between an application of McAfee and patents’to Gray issued while McAfee’s application was pending. The subject-matter of the interference relates to the conversion of higher boiling petroleum hydrocarbons into lower boiling petroleum hydrocarbons under certain conditions. There are eight counts of the issue, of which 1 and 6 are-examples. 1. The process of converting hydrocarbons having higher boiling points into nap'btba, which consists in beating said hydrocarbons in tbe presence of anhydrous aluminum chloride to a temperature producing vapor having a temperature not substantially above the end boiling point of naphtha and maintaining them at such temperature. 6. The process of converting hydrocarbons having higher boiling points, in to naphtha, which consists in beating said hydrocarbons in the presence of anhydrous aluminum chloride to a temperature producing vapor having a temperature above tbe end boiling point of naphtha, but below tbe end boiling point of illuminating oil, condensing the illuminating oil driven off in a preliminary cooling chamber, returning said oil to tbe still to be further acted on whereby higher boiling oil is converted into naphtha and conducting tbe naphtha driven off to a condenser. [177] Gray was successful before the Examiner of Interferences, but lost on appeal to the Examiners in Chief, whose decision was affirmed by the Commissioner. It is agreed by the three tribunals that the essence of the invention lies in a proper temperature control in the vapor line, and that the present process converts substantially all the higher boiling hydrocarbons into a.ny desired specific lower boiling hydrocarbon, such, for example, as gasoline. Gray and McAfee are highly trained chemists, and were employed by the Texas Company, which was engaged in producing and refining petroleum products. Gray says in his preliminary statement that he conceived and disclosed the invention as “early as November 5, 1912.” He does not claim that he personally reduced it to practice, but asserts that what McAfee did in perfecting the process was done in accordance with a general plan disclosed by him to McAfee. Erom this it appears that the question to be solved is one of originality. Whether or not Gray should prevail must be determined by the consideration of a letter sent bv him to McAfee on November 5, 1912. By that letter, he says, he disclosed to McAfee. No claim of a later disclosure is put forward by him. If, then, the letter did not disclose the invention, Gray cannot succeed. The Examiner of Interferences found that it did; but, as we have said, the Examiners in Chief and the Commissioner held otherwise. With great thoroughness the Examiners in Chief analyzed the letter, and compared its disclosures with the claims of the issue. We do not think it necessary to do much more than follow in substance their opinion. Gray wrote to McAfee on October 29, 1912, giving directions with respect to certain experiments which he desired him to carry out. He said that McAfee was evidently posted on all the literature relating 1o the subject, and that if he went ahead he would “probably accomplish something.” McAfee responded, making some suggestions, part of which did not meet with Gray’s approval. The latter then wrote the letter of November 5, in which he advised that McAfee take some tar or residuum from Oklahoma crude, and place it in a small experimental still, hut gave no intimation that aluminum chloride, or any other catalyst, should be mixed with it. He recommended that the vapor line he so placed that the vapor would have to pass up through probably 8 or 10 feet of pipe before reaching the condenser, and that Hie oil in the still be held at a temperature of 625 to 675°E. He thought that, if his suggestion was followed, it would produce cracking, and that the product passing over through the vapor line would be light hydrocarbon having a gravity lighter than 50° Beaume. lie further said that the pipe should slope upward, so that nothing which condensed in it would reach the condenser, but would return to the still. The still, according to him, was to be held at the temperature specified for at least 48 hours, and, if this was done, he said, the distillate thrown over would contain a very large percentage of cracked products, which should be hydrogenized very rapidly. The plan thus outlined by Gray is nothing more than a cracking process to be followed by hydrogenization. This is emphasized by his further statement that: [178] “The distillates can probably be hydrogenized by passing a catalyzing agent in that part of the vapor line furthest from the fire, keeping this part of the line at a temperature of probably S50 degrees F.” This is all upon which he bases a disclosure of that feature of the invention which requires the maintenance in the vapor line of a temperature not substantially above the end boiling point of naphtha. But we do not think it is open to such an interpretation. What he writes about is hydrogenization, and if the specific temperature mentioned has any significance it can only be in connection with the process of producing a hydrogenized product, which is not the matter in issue here. It should also be borne in mind that Gray is not discussing a process in which a catalyst is mixed with the oil in the still, for he specifically states that the catalyzing agent should be placed in that part of the vapor line furthest from the fire. He does not suggest a temperature below 350° F., either for the purpose of preventing the catalyst from passing over to the condenser with the light hydrocarbons or for the purpose of allowing the naphtha products to pass over while the higher boiling products condense and flow back to the still. Nor does he advise the use of aluminum chloride as a catalyzing agent. As just noted, he does not direct that the catalyst shall be mixed with the oil in the still. Gray attempts to explain this by saying that any one skilled in the art of refining oil, as McAfee was, would know that, if aluminum chloride was to be employed as a catalyst, it should be placed in the still. But he (Gray) directs that the catalyzing agent should be placed at a point in the vapor line furthest from the fire. However, it is clear that Gray’s letter does not mention the substance aluminum chloride, called for by all of the interference counts, and is specific to a mode of procedure different from that of the issue and involving the use of a catalyst other than that employed in tire process in issue. After stating that the process should be continued 48 to 60 hours, with a constant temperature, the letter concludes by saying: “Xou will thus obtain some cracked distillates, which will give you an idea of what they look like, how they smell, how they react with sulphuric acid, and when you receive your materials you will know better what is taking place.” The products mentioned in this quotation appear to be what would be produced by the treatment of heavy oils in the absence of a catalyzing agent. Finally, this letter discloses nothing in such detail as would enable McAfee to work out the process of the issue without invention. Admittedly the invention was reduced to practice by McAfee during the month of December, 1912, and there is evidence that Gray saw demonstration of it on or about the 22d of that month. Prior to that Gray had been informed over the telephone by McAfee of a successful test of the invention, which occurred about December 11 or 12. Gray does not deny this, but, as we have said, claims that what Mc-Afee did by way of reducing it to practice inured to his benefit. In other words, he relies upon McAfee’s reduction to practice had about the 11th or 12th of December. [179] Now happens a very significant thing: On January 23, 1913, a little over a month after McAfee’s reduction to practice, Gray filed two applications for patents on this subject-matter; yet he does not say one word in either about vapor control, which, as we have remarked, is conceded to be the essence of the invention. On, the contrary, he describes therein the mixture of gas, oil, and anhydrous aluminum chloride in the still'. In one he states that the mixture is heated to a temperature not substantially above 325 to 350° E., and in the other not substantially above the end boiling point of naphtha. Thus the applications remained until January 22, 1915, nearly two years, when they, were amended to aver a control of vapor temperature. If Gray had the invention on the 5th of November, it seems incredible that he would not have embodied in his applications the idea of temperature control of the vapors in the vapor line. We do not think he possessed it at that time. He knew what he wanted, but did not know how to get it. McAfee, independently of him, conceived and reduced to practice the process by which to achieve the desired end, and is entitled to priority. The decision of the Commissioner of Patents was right, and it is affirmed. Affirmed.