Stamicarbon, N.V. v. Chemical Construction Corp.

GIBBONS, Circuit Judge

(dissenting).

This interference proceeding involves an alleged improvement in the process of synthesizing urea from carbon dioxide and ammonia. The prior art taught that when carbon dioxide and excess ammonia are subjected to high pressure in a reaction vessel a reversible reaction occurs in which is formed an intermediate product called ammonium carbamate. That intermediate product in turn decomposes into urea and water. The process stream comes from the high pressure reaction vessel as a mixture of excess ammonia, unconverted ammonium carbamate, urea and water. The end product of the process is a liquid mixture of urea and water which yields the desired urea. Before that end product is achieved the excess of ammonia and unconverted ammonium carbamate must be removed in the form of an off-gas which is recycled to the reaction vessel.

It is common to the Mavrovic and Bongard processes, and to the prior art as well, that the desideratum is to maximize the amount of water left in the urea stream and minimize the amount of water in the off-gas. The prior art taught that the decomposition of ammonium carbamate was accomplished by a simultaneous pressure reduction and heating. Both reduction in pressure and increase in temperature cause an increase in volume, and result in the decomposition of ammonium carbamate.1 But since the process stream leaving the reaction vessel also contains water, the addition of heat would tend to vaporize more water, thus increasing the water content of the off-gas to be recycled.2

The claimed invention is that of taking the off-gas in two stages; first when the ammonium carbamate decomposes solely as a result of a reduction in pressure; then at a later stage in the process when the remaining liquid mixture is again expanded by heating. As a result, when the two off-gas stages are recombined the recycled stream has less water than under the prior art process. This is apparently due to the fact that when the initial decomposition of ammonium carbamate by pressure reduction takes place, the process vaporizes less water than if the temperature of the process stream were increased at that stage.

The sole issue addressed by the majority is whether Bongard’s Netherlands application filed in September, 1960, explicitly or inherently disclosed such an improvement over the prior art. The Board of Patent *655Interferences held that it did.3 The district court agreed.4 Both awarded priority to Bongard. Clearly both were right when they held that the Bongard application inherently disclosed that taking the off-gas from the stream in two stages, one of which was at the point of decomposition of ammonium carbamate resulting solely from pressure reduction rather than from heating, resulted in a recycle stream containing less water. This is the sole alleged invention in issue.

Mavrovic relies on two counts. In Count I the critical language reads:

“. . . the improvement which comprises reducing the pressure of the urea synthesis effluent process stream under substantially adiabatic conditions thereby decomposing ammonium carbamate, separating a first off-gas having a low water content from the residual process stream.”

As Judge Rosenn concedes in footnote 7, this count requires no more than separation of the first off-gas without heating. Decomposition of ammonium carbamate is accomplished in other words, solely as a result of pressure reduction, and the resulting gas is removed. Mavrovic’s Count II also discloses separation of the off-gas described in Count I, without heating. Thus for present purposes both of Mavrovic’s Counts can be treated as requiring separation of the first off-gas prior to heating the process stream after the stream has left the reaction vessel and passed through a pressure reduction valve.

The Bongard Netherlands application reads:

It has been found, in accordance with the invention, that this [reduction of water content] can be realized in a simple way by omitting the direct heating to a higher temperature of the expanded mixture and the subsequent separation of the resulting liquid and gas phases, and instead leading this mixture after expansion and without preheating, through a preliminary separator and heating the resulting liquid phase, after this leading the gas-liquid mixture then formed through another liquid separator. It is found that in this case the water content of the gas phases is lower than with the old method, in which no preliminary separator is used.

The district court found this to be a disclosure of separation of the first off-gas prior to heating. Judge Rosenn, seizing on the single word “preheating” in the Bongard application, constructs a linguistic edifice totally divorced from the text of the Bongard disclosure, and totally divorced from the physical phenomena it describes. The heart of his argument is in a paragraph on page 651:

The district court based its conclusion on Bongard’s actual disclosure, which states:
. leading this mixture after expansion and without preheating, through a preliminary separator
It is apparent that the district court, in effect, read the word “preheating” to mean “heating.” Such a reading is contrary to the natural meaning of the words. “Preheating” implies heating done before the next step, which next step is separation. A natural reading of the above quoted passage would take the language to preclude heating before separation. The passage simply does not speak to the presence or absence of heating during separation.

But the short quote is not Bongard’s disclosure. Bongard explicitly disclosed:

(1) “omitting the direct heating to a higher temperature of the expanded mixture and the subsequent separation of the resulting liquid and gas phases”;
(2) “instead [of expansion by heating as in the prior art] leading this [gas *656phase] mixture after expansion and without preheating to a preliminary separator”;
(3) “heating the resulting liquid phase, after this leading the gas mixture then formed through another liquid separator”;
(4) “the water content of the gas phases is lower than with the old method, in which no preliminary separator is used.” (Emphasis supplied).

Judge Rosenn’s artificial linguistic edifice depends upon his utter disregard of the plain language “omitting the direct heating to a higher temperature of the expanded mixture.” It is understandable that the majority has difficulty comprehending the language of the Bongard disclosure, which is a translation into English from the original Dutch. Nonetheless, the awkwardness of the translation is no excuse for the majority’s failure to pay attention to all the words of the disclosure. I think the source of the majority’s error is in plainest relief at p. 652 n. 10, supra. Judge Rosenn asserts that “ ‘omitting the direct heating to a higher temperature,’ does not expressly preclude heating during separation.” But it does: the language of the disclosure is “omitting the direct heating to a higher temperature of the expanded mixture.” (Emphasis added). The “expanded mixture” is what is in the preliminary separator, the “simple separatory vessel” of figure 3. It has passed from the reaction vessel, through an expansion valve, into the preliminary separator. At that point, it is the “expanded mixture,” the direct heating of which is expressly omitted by the Bongard process. It was so found by the district court. That- conclusion, far from being “clearly erroneous,” is clearly correct. Moreover the majority opinion totally disregards the context of the disclosures in both the Mavrovic and Bongard applications. That context is the elimination of water vapor in the off-gas stream.

The Bongard application plainly discloses the elimination of heating in the expansion stage of the prior art. It plainly discloses use of a preliminary separator. It plainly discloses subsequent heating of the liquid stream to accomplish further degeneration of ammonium carbamate. It plainly discloses that the recombined gas streams result in a recycle stream lower in water content (the object of the invention). Despite these plain disclosures Judge Rosenn reads into the term “without preheating” a negative implication that heating does take place during preliminary separation.

The district court found that when Bongard referred to a “preliminary separator” in which the first off-gas was separated he referred to a vessel that did not use heat. In the context of the application — a claimed invention for the reduction of water vapor in the off-gas — no one who appreciates that heat boils water could read the disclosure otherwise.

If there were any room for doubt, and there is none, it would be removed by Bongard’s explanation that the preliminary vessels shown in figure 3 of his application are:

“. . . simple separatory vessels provided with a feed line for the liquid-gas mixture, arranged between a liquid discharge line at the base and a gas discharge line at the top of the vessel.” 401 F.Supp. at 393, Trial Exhibit MX-3, p. 11.

The district court found that the necessary and only reasonable construction of the language of Bongard’s application is that the separator in his figure 3 operates simply to allow whatever gas there is in the mixture to flow out the top of the separator and liquid to flow out the bottom, without any heating or other significant alteration. That is precisely the message, and the only message conveyed to me.

The majority refers to figure 4 of the Bongard application in support of its conclusion. Figure 4 of the Bongard process reveals the use of a “scrubber,” or separator, which uses heat. However, that figure is not relevant to the count at issue in this appeal. The relevant disclosure is figure 3, *657using “simple separatory vessels” — and it is irrelevant that Bongard concedes that alternatively “[i]t is also possible ... to apply a liquid gas separator of a more complicated design,” i.e., a heat-activated scrubber. The alternative possibility of using heat does not negate the fact that the basic Bongard disclosure omits heat. At the risk of being repetitious I emphasize that the Bongard application inherently disclosed 1) a urea synthesis process which effected a reduction of the water content of the recycle stream; and 2) accomplished this by means of an adiabatic process involving expansion and subsequent separation of the reaction vessel product without the addition of heat.

The district court did not err. One who read Bongard’s 1960 application would know precisely as much about the method of elimination of water from the recycled gas stream of the urea process as would one who read Mavrovic’s 1966 claims. The process of eliminating water from that stream is the sole invention. The majority has simply read out of the Bongard disclosure its express elimination of heat in the initial expansion and separation. The majority reads into figure 3 a heater which cannot, by any reasonable construction of that figure or of the text of the application, be found there. I do not understand what public purpose is served by such word games.

Appellee makes several other contentions to which Judge Rosenn refers. The majority does not reach them. I reject them for the reasons set forth in the opinion in the district court. I would affirm.

. Kalterman- and Rennie, “Conversion of Ammonia to Urea and Ureaforms,” Chemistry and Technology of Fertilizers 37 (Sauchelli, ed. 1960).

. When pressure is reduced, water boils at a lower temperature. See “Water,” 23 Encyclopedia Britannica 404 (1959 ed.); “Evaporation,” 8 Id. 898; “Boiling Point,” 3 Id. 803. Where pressure is constant, the addition of heat increases the rate of evaporation of water. See “Kinetic Theory of Matter,” 13 Id. 390. Because the prior art involved both the reduction of pressure and the addition of heat, it caused too much water vapor to enter the off-gas. When recycled to the reaction vessel, it hindered carbamate production. See Kalterman and Rennie, supra note 1.

. 187 U.S.P.Q. 230 (1972).

. Stamicarbon, N.V. v. Chemical Construction Corp., 401 F.Supp. 384 (D.Del.1975).