1993 and matured into U.S. Patent No. 6,005,061 (“the ‘061 patent”) on
December 21, 1999.
Paper 62, p. 133 (citations to the record omitted).
After September, 1990, the record shows that Geerts turned his attention to a different way
of making organo-aluminoxy co-catalysts. This method employed the reaction of an aluminoxane
with an organo boroxine. The boroxine method is outside the scope of the count. This boroxine
work resulted in the filing of application 08/017,207 on February 12, 1993, and divisional
application 08/373,129 on January 17, 1995. These applications matured into Patents 5,411,925 and
6,005, 061, respectively.
Geerts provides no explanation why the boroxine work justifies a delay in further evaluation
by the Phillips patent department. There had already been substantial work on the invention of the
count, including at least eleven reductions to practice. The aluminoxy co-catalysts had been shown
to be useful for polymerization. Four patent idea records had been prepared. These ideas had been
assigned invention numbers and approved for submission to the Phillips Invention Committee. The
evaluation of the invention was ready to move to the next step. Yet the evaluation of the inventions
languished with the patent liaison. Geerts provides no explanation nor directs us to any evidence
which connects the boroxine work with the delay in evaluating the invention.
Geerts asserts that the boroxine work should excuse the delay because it was a refinement
of the invention of the count. Paper 62, p. 8, ¶ 16; p. 32, ¶ 66. Dr. Geerts testified that he considered
the boroxine work to be a refinement of the invention of the count. GR 205-206, ¶¶ 21-22.
However, the boroxine work is not mentioned in Geerts’ involved patent and, therefore, can not
justify the delay in filing. Refinements and improvements which are not reflected in the final patent
application can not be used to justify a delay in filing. Lutzker, 843 F.2d at, 1367, 6 USPQ2d at
1372; Horwath, 564 F.2d at 952, 195 USPQ at 706.
In any event, we view the relationship between the boroxine work and the subject matter of
the count to be too insubstantial to credit any of the boroxine work to justifying a delay in processing
of the invention of the count. We note that testimony of record states that the invention of the count
and the boroxine work were closely related. GR 27, ¶ 54; GR 61-62, ¶ 18; GR 364-65, ¶ 30.
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