ATLAS CHEMICAL INDUSTRIES INCORPORATED'S APPLICATION

86 Atlas Chemical Industries Inc.'s Application [1969] R.P.C. IN THE ApPEAL TRIBUNAL Before MR. JUSTICE LLOYD-JACOB 21st October, and 28th November, 1968. ATLAS CHEMICAL INDUSTRIES INCORPORATED'S ApPLICATION Patent-Opposition-Prior claiming-Convention priority-Issue estoppel-Prior 5 claiming not established-Appeal by successful party against hearing officer's findings in part of his decision-Observations on priority date did not amount to issue estoppel-Appeal dismissed. Patents Appeal Tribunal Rules, 1950, r. 2. In an opposition where prior claiming was alleged, the applicants contended inter 10 alia that the objection failed because their claims were entitled to convention priority earlier than the cited claims. The hearing officer found that the applicants' claims were not entitled to that convention priority, but as the opponents had failed to establish identity between the applicants' claims and those cited, he dismissed the opposition. The applicants appealed against the hearing officer's acceptance of the 15 opponents' submissions on priority and sought to reverse that part of the decision on the ground that it was a finding on an issue, and issue estoppel could arise. Held, dismissing the appeal, that the hearing officer's finding that the claims w~re not entitled to convention priority was of a collateral nature and did not determine an issue between the parties, and that no question of issue estoppel arose as there 20 was no finding of identity of claiming, which was an essential requirement tor the determination of the legal consequences of the alleged conflict between the two specifications. Observed. It would be a more prudent course if hearing officers intending to express a similar conclusion in dismissing an objection of prior claiming retrain 25 from expressing a concluded finding on date. This was an appeal to the Patents Appeal Tribunal by the applioants,Atlas Chemical Industries Incorporated, in an opposition by Isocyanate Products Incorporated to application No. 876,469, from a decision of Mr. T. C. Taylor, dated 2nd January 1968, whereby he refused to accord convention priority to the original 30 claims in the applicants' specification. The applicants sought to have that part of the decision dealing with priority date expunged from the decision. The relevant parts of the hearing officer's decision are set out below. 87 [No.4.] . Comptroller General Mr. Taylor B. W. Budd, instructed by Stevens Langner, Parry & Rollinson, appeared for the applicants. Julian Jeffs, instructed by Sanderson & Co., appeared for the opponents. Mr. Taylor-(After stating 'the grounds of opposition, continued :) The specification relates to the production of rigid polyurethane foam by reacting a 5 polyoxypropylene ether of hexitol and an arylene diisocyanate. Foam formation is effected by generation of gas produced by adding to the reacting mixture, low boiling or thermally unstable components which volatilize or decompose respectively or, alternatively, the gas may be chemically prepared in situ, for example, by employing a molar excess of diisocyanate over that required to react with the active hydrogen 10 of the polyester, and incorporating water into the mixture to react with the excess isocyanate, thereby liberating carbon dioxide and at the same time, cross-linking the forming polyurethane resins. The applicants' complete specification was filed on 18th August 1959, claiming priority from U.S. application No. 757,670, dated 28th August 1958 and U.S. 15 application No. 819,820, dated 12th June 1959. Prior claiming is alleged in specification No. 947,482, the complete specification of which was filed on 29th December 1959, claiming priority from a U.S. application, dated 30th December 1958 ; the latter priority is not contested, and so the issue of prior claiming falls to be considered only if the applicants' claims are not fairly based 20 on the first U.S. application dated 28th August 1958. Considering first, therefore, the question of priority date of the applicants' claims as proposed to be amended, the new claim 1 excludes the use of hexitol, being now confined to a hexitol-water mixture. containing up to 15 per cent water. 'The earlier of the two U.S. applications relied on for priority refers, on page 1 paragraph 3, to 25 the production of rigid foams employing mixed polyoxypropylene ethers obtained from a hexitol in admixture with a small proportion of water, the latter being particularised on page 2, paragraph 2, as being suitably from O·5 to 15 per cent by weight. The lower limit of the range prescribed in the amended claims is disclosed on page 1, paragraph 3 of the U.S. application, whilst the upper limit is to be found 30 on page 2, line 4. The hexitols and arylene diisocyanates are set forth on page 2 in the same 'terms as in the U.K. specification. The applicants' claims make no mention of the use of a gas generant, but it can fairly be said that since a foam is concerned, a gas generant is implicitly present and the terms of the claim must inherently include it. The opponents accept this, 35 but it is their contention that the earlier U.S. specification refers only to the production of gas by adding water to react with the 'excess isocyanate, thus generating carbon dioxide and effecting cross-linking ; the other modes of gas generation to which the opposed specification refers were not, they say, matters of common general knowledge at the date of the 'earliest U.S. specification and certainly they are not 40 referred to therein. Mr. Satterly, for the opponents emphasises this on page 33 of his declaration, but Mr. Britton, for the applicants, whilst admitting that the use of a gas generant is an inescapable requirement, alleges that the use of gas generants of many different types was well-known at the time when U.S. application No. 757,670 was filed, supporting this view by reference to German patents Nos. 860,109 and 45 913,474 which were available in the Library at the Patent Office in March 1953 and September 1954 respectively, and which certainly refer to the use of decomposable 88 Lloyd-Jacob, J. Atlas Chemical Industries Inc.'s Application [1969] R.P.C. compounds and volatile liquids as alternative gas generants to the formation of carbon dioxide in situ in polyurethane foams. I am, however, in no doubt at all that the process of the earlier U.S. specification No. 757,670, as this is described, is confined to gas generation by reacting excess diisocyanate with added water, and I cannot take into consideration that it may have been open to the U.S. applicants to 5 disclose other methods. My understanding of their invention is confirmed by claim 1 of the U.. S. application which specifically requires the presence of three named components, viz: an arylene diisocyanate, a mixed polyoxypropylene ether (propylene oxide plus a hexitol-water mixture) and walter. It is true tha;t 'there is a statement on page 1, lines 1 to 5 of the (...truncated)