Abbott v. Shepherd

• Decision Date: 31 December 1942
• Docket Number: No. 7903.,7903.
• Citation: 135 F.2d 769
• Parties: ABBOTT et al. v. SHEPHERD et al.
• Court: U.S. Court of Appeals — District of Columbia Circuit

135 F.2d 769 (1942)

ABBOTT et al. v. SHEPHERD et al.

No. 7903.

United States Court of Appeals for the District of Columbia.

Decided December 31, 1942.

On Rehearing June 25, 1943.

Mr. Robert Cushman, of Boston, Mass., with whom Messrs. Arlon V. Cushman, of Washington, D. C., and Clarence H. Porter, of Boston, Mass., were on the brief, for appellants.

Mr. Harry G. Kimball, with whom Mr. Leslie C. Garnett, both of Washington, D. C., was on the brief, for appellees. Mr. Samuel F. Beach, of Washington, D. C., also entered an appearance for appellees.

Before GRONER, Chief Justice and STEPHENS and RUTLEDGE, Associate Justices.

RUTLEDGE, Associate Justice.

The suit is pursuant to Rev.Stat. § 4915 (1878), 35 U.S.C. § 63 (1940), to obtain letters patent. The only question is priority of invention, which in turn depends upon reduction to practice and diligence. In interference proceedings the Patent Office, through the Board of Appeals, awarded priority to Shepherd,¹ although the Examiner of Interferences previously had found in favor of Abbott. The District Court also decided for Shepherd, on both diligence and reduction to practice, and accordingly dismissed Abbott's complaint. He now appeals.

The invention relates to a process for weaving into cloth flexible yarn, composed wholly or in part of rubber. It is useful in making rubber garments or garments containing rubber strands. For instance, in making men's clothing, the art has developed a fabric made with all worsted warp yarns, and mainly worsted filling or weft yarns interspersed every fourth, fifth or sixth yarn with an elastic rubber one. One of these elastic threads was known as "Lastex."

Difficulties arose in weaving due to uneven tensioning of the elastic yarns. Variations in tension, caused by machine action, varied the stretch of the yarn. Such a variation in the finished cloth would draw in its edges unevenly, making them wavy, and would tend to make the cloth pucker or "cockle." The gist of the invention, to meet these and other difficulties, is in coating the elastic thread with a sizing or liquid composition, so that when the coating hardens it forms a jacket around the thread and holds it in the tension which exists when the sizing is applied. The effect is to render the yarn sufficiently rigid to prevent the uneven tensions, but at the same time sufficiently flexible to permit weaving like ordinary yarn. The sizing is applied before the yarn is woven and is washed out or dissolved afterward. The yarn may be coated either in stretched or in relaxed condition as desired. One claimed advantage of interspersing rubber threads with worsted ones is to give the cloth greater capacity for holding crease when pressed. The process is useful also in weaving the more elastic garments women wear. Perhaps one element of genius in the invention is this achievement, at a single stroke, of greater rigidity for men's apparel and greater elasticity for that of women.

Abbott conceived the invention about June 1, 1933. His application was not filed until September 22, 1934. Shepherd's United States application is based on a British patent. His earliest date is March 19, 1934, when he filed a provisional specification in England, followed shortly by his complete one there and the parent United States application. His United States divisional application, which was the one involved in the Interference, was filed after September, 1934.

In view of his priority in conception, Abbott is entitled to priority in invention if he reduced it to practice prior to March 19, 1934, or if he maintained due diligence in perfecting it until the time of his application.² The filing of Shepherd's application constitutes a constructive reduction to practice as of March 19, 1934, if his disclosure is sufficient to enable one skilled in the art to practice the invention. At various stages in the Patent Office proceedings and in the District Court the issues have been: (1) whether Abbott reduced the invention to practice prior to March 19, 1934; (2) whether, if not, he was diligent in perfecting the invention from a time prior to that date to September 22 following, when his application was filed; (3) whether Shepherd's disclosure is sufficient to enable one skilled in the art to practice the invention, and therefore to constitute a constructive reduction to practice.

Except in respects not now important, material evidence was not greatly different in the Patent Office and the District Court. Notwithstanding this, as has been noted, there were contrariety of opinion within the trial tribunals and apparent confusion, if not inconsistency, in some of the parties' contentions, especially concerning what is a sufficient reduction to practice and when this took place. Thus, Abbott claims conception and reduction to practice in 1933. But he admits and all of his evidence to show diligence is to the effect that he or Burke, through whom his experiments were performed, had not perfected the invention or found a satisfactory size before March 19, 1934, or in fact until late in May of that year. He contends, and must do so to retain priority in conception, that the gist of the invention is not in any specific sizing formula, but lies in the more general idea of applying any suitable sizing to the yarn, weaving it, and then washing out the sizing. Yet he urges strongly that Shepherd's equally general disclosure, that is, apart from Abbott's specific formulas, is not sufficient and therefore cannot be a constructive reduction to practice. Shepherd, on the other hand, seems to argue that his own disclosure is sufficient, and that Burke, who only devised formulas for Abbott's sizing, not Abbott, is the inventor of the latter's process. In view of this contrariety in result and reasoning, on the part of both the primary tribunals and the parties, the case is not one appropriate for disposal merely by applying the doctrine of Abbott v. Coe, 1939, 71 App. D.C. 195, 109 F.2d 449, and a statement of the evidence from which the various opinions have been drawn is necessary.

I

Abbott is an experienced and fertile inventor, gifted in designing machinery, especially for use in textile manufacturing, and in developing textile processes. He is also a business executive, engaged in the textile business since 1909 and in the textile machinery business since 1928. He is not an expert chemist or a specialist in the field of sizing yarns. He carries on his executive duties and his work of invention simultaneously, often conducting or directing several inventive projects at once. He is president of the Abbott Machine Company, which makes dyeing machinery among other things. In 1933 the company employed Mr. Burke, a trained chemist "primarily as an expert engineer, chemist, and dye man, to sell and engineer various problems in promotion of this dye machinery." Burke lived in Melrose, Massachusetts, where he had a private laboratory in his home. His sales work required travel, so that he was away from home three or four nights each week.

Abbott testified he conceived the idea of sizing or coating rubber yarn for weaving purposes about June 1, 1933, and first mentioned it to Burke about July 4, just before leaving for his vacation. He returned just after Labor Day and gave Burke directions about following up the invention. These were that the best solution, apparently, would be "to stretch the yarn out and coat it with some material which would hold it in place; and then it could be woven or knitted and then the coating material washed off." At the same time Abbott himself considered mechanical possibilities for controlling the stretch of the yarn in the loom or knitting machine, a problem distinct from the coating.³ Burke was told "to take almost any kind of rubber yarn that he could pick up and stretch it and coat it with various materials and see what we could do about a material which would hold it in stretched-out condition." Among the possibilities Abbott mentioned were starch, casein and glue.

Burke tried out "some preliminary compounds" on ordinary small rubber bands. Before the end of September he reported to Abbott that a sizing would hold the strands extended. Following Abbott's instructions, early in October Burke tried the coating on regular rubber yarn, samples of Lastex procured from a friend, Meade, who was an official of the United States Rubber Company, and made a brief memorandum stating, "Tried size on rubber thread; it holds . . . sets o. k. with special size." He reported this to Abbott soon afterward.

From then on Burke's efforts were given to developing suitable formulas for sizing. He worked chiefly on three general types, based largely on dextrine, casein and thymol-iodoform. Eventually he developed three specific formulas, which he termed the "dextrine type," the "casein type" and the "thymol-iodoform type," respectively. They were incorporated in that order of preference in Abbott's application as "preferred compositions of size." But the specification stated: "The size may be any suitable adhesive composition of sufficient tenacity for the purpose indicated, but not destructive of the flexibility necessary for winding and weaving, and capable of subsequent removal, preferably by water." Formula No. 1, the "dextrine type," was the most satisfactory and the one which finally convinced Abbott the search for the right compound had been concluded successfully. Just when this was developed is not entirely clear. But it was on May 25, 1934, when Burke took coated specimens of the Lastex yarn to him, that Abbott approved the results finally and told Burke to write up a report covering his whole work. Burke did so, and on May 29 Abbott instructed his attorneys to proceed with the preliminary search and a patent application.

The evidence for Abbott consisted largely of his own and Burke's testimony and a few documentary and physical exhibits, although Mrs. Burke gave supporting...