Application of Dybel

• Decision Date: 19 February 1976
• Docket Number: Patent Appeal No. 74-586.
• Citation: 524 F.2d 1393
• Parties: Application of Frank R. DYBEL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

524 F.2d 1393

Application of Frank R. DYBEL.

Patent Appeal No. 74-586.

United States Court of Customs and Patent Appeals.

November 6, 1975.

Rehearing Denied February 19, 1976.

Dennis R. Schlemmer, Wolfe, Hubbard, Leydig, Voit & Osann, Ltd., Chicago, Ill., attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; R. V. Lupo, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.

MILLER, Judge.

This appeal is from a decision of the Patent and Trademark Office (PTO) Board of Appeals affirming rejections of claims 1-18 under 35 U.S.C. § 102(b) and claims 17 and 18 under 35 U.S.C. § 103 in application serial No. 832,542, filed May 12, 1969, which is a continuation of application serial No. 670,189, filed September 25, 1967, for "Piezoelectric Transducer Sensor." The controlling issues involve the questions of whether the invention was in public use or on sale within the meaning of 35 U.S.C. § 102(b) more than a year prior to the filing date of the parent application, and whether the subject matter of claim 17 would have been obvious to one of ordinary skill in the art. We reverse in part and affirm in part.

The Invention

The invention is a load sensing piezoelectric transducer used to prevent overloading of power press members subject to stress. The transducer is attached to the press member so that force applied to the press member is transferred to the piezoelectric element, which generates a proportional voltage. An excessive voltage energizes a machine monitoring means. Fig. 1, reproduced below, is described in the specification as follows:

In Fig. 1, the numeral 1 designates the piezoelectric transducer unit mounted on a force carrying member 2 of a press. The force carrying member 2 is illustrated schematically. The piezoelectric transducer 3 is shown in cross-section as consisting of a piezoelectric ceramic crystal 4 positioned between a top terminal block 5 and a bottom terminal block 6 with the top and bottom faces of the crystal in contact with and against the surface of each of the respective terminal blocks. The terminal blocks and crystal are surrounded by a metallic sheath 7 which serves as a magnetic and electric shield. The sheath is slightly larger than the terminal blocks and crystal to provide space for a surrounding layer 8 of an encapsulating and insulating plastic layer 8. Leading from the terminal blocks through the insulating layer 8 and the metallic sheath 7 are terminals 9 and 10 with suitable connections for attachment of leads to the electronic circuit.

Claim 1 broadly recites the combination of press, piezoelectric transducer, and electronic circuit:

1. In a machine having two work members movable with respect to each other and subject to repetitive loading forces for transmission to a work piece between said members, at least one force carrying member carrying and transmitting said loading force to one of said work members, and an electrically responsive strain sensing device positioned on said force carrying member, the improvement in combination therewith wherein said sensing device is a piezoelectric transducer,

said piezoelectric transducer comprising a piezoelectric element, a first terminal block positioned against one face of said element and a second terminal block positioned against the opposite side of said element,

a mounting means attached to and extending from the force carrying member, said mounting means comprising a first and a second bracket spaced from each other, one end of each bracket being attached to said force carrying member, the other ends of said brackets having contact means for engagement with said terminal blocks, at least one of said contact means being electrically nonconductive,

said piezoelectric transducer being positioned and clamped between the said other ends of the brackets with the contact means of said first bracket engaging said first terminal block and the contact means of said second bracket engaging said second terminal block so that the clamping force of the brackets is substantially parallel to and aligned with a line normal to the interfaces between said element and terminal blocks, and

an energized electronic circuit electrically connected to the terminal blocks which circuit is predeterminedly activated by the output signal of the piezoelectric transducer when stressed during a work cycle of the machine to activate a machine monitoring means.

Claims 2, 3, 13-16, and 18 add sheath 7. Claims 17 and 18 limit the brackets to threaded members that are screwed into internally threaded apertures of the force carrying member. The remaining claims are dependent on claim 1.

Public Use Proceedings

Appellant and two individuals named Budraitis and Harding formed a joint venture based on the invention. After an application for patent was filed, they had a falling out, and Budraitis and Harding petitioned for public use proceedings. These were instituted and the testimony of witnesses was taken by deposition. Rule 292(a), 37 CFR 1.292(a).¹ The pertinent evidence is summarized below.

From 1959 to 1963 appellant was employed as an electrical engineer for Verson All-Steel Press Co., where he was involved mainly in designing strain gauge load sensing equipment for controlling large presses. By 1961 appellant had conceived the present invention, utilizing a piezoelectric transducer, as an improvement over strain gauge control devices. With the aid of Budraitis, a draftsman at Verson, he proceeded to develop and test his conception in the basement of his home. However, Budraitis testified that commercially available strain gauges were accurate to better than plus or minus two percent and that the necessity of achieving at least that accuracy was recognized. From his work at Verson, appellant knew that to be properly tested for accuracy and stability under various conditions the invention would have to be installed for a long period on a large press costing at least $10,000, which he did not have at his disposal. Consequently, petitioner Harding, a full-time vacuum cleaner salesman, was invited to join the venture to assist in interesting several companies in installing the invention on their presses. In order to encourage purchase of the invention, the quoted price was one-fourth the going rate for prior control devices.

In the fall of 1963, after a number of unsuccessful attempts, a quotation to Starline, Inc. was accepted. The agreement provided that payment was subject to the device's operating to the satisfaction of Starline for sixty days after installation. The joint venture (Industrial Standard Manufacturing Co.) represented to Starline that the device would operate to an accuracy of plus or minus two percent. However, after about three months, "test data" showed that the device was experiencing errors of fifty percent or more. Because of the inaccuracy of the device, it would sometimes shut down the Starline press at loads below the maximum permissible load setting. To prevent this, the operator would adjust the load setting to above 100 percent. It was appellant's opinion that overall redesign was necessary to overcome the problems.

Starline's plant manager, Meany, who was responsible for authorizing payment for the device, believed it to be operating satisfactorily. However, Meany was not aware of the magnitude of the errors occurring. He testified that he had the "feeling" that the device was experimental as far as both Starline and the joint venture were concerned, and that the device purchased by Starline was the first of its kind. Although appellant could not recall whether he advised Starline that the device was experimental, he testified that it required testing before it would be ready for commercial sale.

No changes were made in the device during the approximately three years it remained on the press. Neither appellant nor petitioners personally profited from the sale to Starline because their expenses exceeded the selling price. Appellant and petitioners agreed to withhold as much information about the device as they could. Third parties were not informed that the basis of the invention was a piezoelectric element, and this could not be easily discovered since the element was completely encapsulated in epoxy resin. The device installed on the Starline press differed in several respects from that disclosed in the patent, including the absence of metallic sheath 7. Appellant admitted, however, that the Starline unit meets the language of claims 1 and 4-10.

In August 1964, a quotation to Alpha Products, Inc. was accepted. The device installed at Alpha also lacked the metallic sheath, but differed in several respects from that installed at Starline and was designed to determine the load on the press rather than to automatically stop the press. Appellant testified that the primary purpose of the Alpha installation was experimental, that the device was the first of its kind, and that he had no idea how it would act. However, the plant manager at Alpha testified that Alpha did not consider it experimental. Like the Starline device, the Alpha device was sold for substantially less than comparable commercial equipment, produced no personal profit for appellant or petitioners, was subject to the purchaser's satisfaction, and operated erratically. Information about the piezoelectric element and other features was withheld from Alpha. Appellant testified that erratic performance could have been from any of a number of problems and that redesign of the device was required. Alpha paid for the device and used it for about a year. Neither appellant nor Budraitis ever informed Alpha about the unsatisfactory "test data."

From the time of the Alpha installation and continuing into 1966, appellant further experimented and modified the invention. In August 1966 an agreement was reached with Ford Motor Co. for delivery and...