Application of Harry, Patent Appeal No. 7168.
| Decision Date | 09 July 1964 |
| Docket Number | Patent Appeal No. 7168. |
| Citation | 333 F.2d 920,142 USPQ 164 |
| Parties | Application of Robert J. HARRY. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
William A. Smith, Jr., Smith, Michael & Gardiner, Washington, D. C., Eugene F. Buell, Hoopes, Leonard & Buell, Pittsburgh, Pa., for appellants.
Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims of application serial No. 703,056, filed December 16, 1957, for "Cranes."
The invention is a soaking pit crane for use in placing steel ingots in and removing them from a soaking pit. The problem alleged to have been met with and solved by appellant was that the soaking pit cranes in use required a lot of headroom and consequently a building with a high roof. He modified existing soaking pit cranes to require less headroom.
Cranes of this type, typified by the principal reference relied on by the Patent Office in rejecting the application, were constructed with a main frame depending vertically from a carriage running on a movable crane bridge. Sliding up and down in the main frame, which served as a rigid guideway somewhat resembling an elevator shaft, was a lower section or column carrying rotatable and actuatable tongs at its lower end for grasping an ingot. The problem, as appellant's specification poses it, was that "This construction requires that there be sufficient head room above the main frame of the crane so that the column when fully raised will clear the roof structure and the bottom of the crane will clear objects on the working floor."
It will be appreciated from what has been said that a soaking pit crane is a telescoping structure, the lower section or column moving in and out of the main frame. The latter serves as a guide for the column, the whole structure being rigid so that the tongs are positively guided. Now, to reduce headroom requirements and to get the desired rise and fall at the same time, appellant designed his crane with three telescoping sections instead of the two formerly used. If we may be permitted our own illustrative analogy, the problem is not unlike having to get a telescoping radio or TV antenna of given extended length into a given space. If the whole is divided into three telescoping sections instead of two, obviously the collapsed length will be shorter.
Elevator mechanism or lift means are, of course, incorporated for lifting the various sections in the proper relationship and includes cables, sheaves, cable drums, motors, etc. The different sections are run at different rates of speed, produced by the proper reeving, so that all sections reach the top of their travel simultaneously.
Claim 5, which is the most detailed, indicates the mechanism sought to be patented and reads:
The references relied on are as follows:
Shutt 1,487,032 Mar. 18, 1924
Haupt 2,737,596 Mar. 6, 1956
Ernestus 2,869,734 Jan. 20, 1959
(filed Sept. 12, 1955)
Swedish patent 158,621 Apr. 16, 1957
Shutt is the principal reference and admittedly shows a soaking pit crane essentially like appellant's except that it has two telescoping sections instead of three and for the same travel would require a higher roof. Haupt shows apparatus, suspended from the ceiling, for raising and lowering the head of an X-ray machine, one embodiment having three relatively slidable, connected, offset sections controlled from above by cables wound on drums. This reference specifically recognizes the problem of getting maximum movement in limited headroom. Ernestus shows hoisting mechanism for raising and lowering tote-boxes and moving them around a factory and employs three vertically telescoping sections, cable-operated. The Swedish patent discloses very similar mechanism denominated "Material-Stacking Crab."
The board affirmed two separate rejections of the examiner, first, on Shutt in view of Haupt, second, on Shutt in view of Haupt, Ernestus, and the Swedish patent.
In an attempt to get rid of the Swedish patent and Ernestus as references, appellant filed two affidavits purporting to comply with Rule 131. The affidavits were held insufficient, in the examiner's words, "because they are devoid of adequate facts to establish a showing of actual reduction to practice of the crane prior to the effective date of the references, or in lieu thereof that applicant had exercised diligence from the date of conception of the invention to the filing date of this application."
Appellant insists the affidavits are sufficient and invites us to read them. We have done so and agree with the Patent Office. It is argued that "it is perfectly clear that they do state a showing of facts * * *." This confusion of terms is perhaps at the root of appellant's difficulty. What the rule requires is not a statement that facts exist but that applicant "shall make oath to facts showing a completion of the invention" etc. (our emphasis) and further requires in (b) that "The showing of facts shall be such, in character and weight, as to establish reduction to practice" etc. Applicant has not even approached such a showing. Of reduction to practice, the first affidavit merely says the subject matter of a drawing annexed "was diligently reduced to practice." The second affidavit says "steps were taken to reduce the invention to practice in a commercial size unit by engineering preparation of drawings, cost estimates and both construction and installation of apparatus embodying the invention was done as promptly as possible in all the circumstances." This is not proof or "showing of facts" but mere pleading. It asserts that facts exist but does not tell what they are or when they occurred. The Patent Office must have such facts as will enable it and its reviewing courts to judge whether there was construction and when it occurred, or whether there was diligence. The affidavits were properly rejected for non-compliance with the rule and all of the references are available.
On the merits of the rejection on the references, we can find no error in the ruling of the Patent Office that it would be obvious, in view of the secondary references, singly or together, to modify the structure of Shutt, the primary reference, by adding more telescoping sections and shortening all of the sections as necessary to reduce headroom requirements. We cannot see here a case of "hindsight reasoning" as alleged by appellant. It is clear to us that one familiar with the art, all of which relates to rigid, vertically moving, overhead crane structures of one kind or another, faced with the problem of reducing headroom requirement would, if possessed of any mechanical skill whatsoever, increase the number and reduce the length of the telescoping sections. The rest is routine engineering design to produce the proper movements and desired relative speeds of travel.
Appellant argues, with respect to the Ernestus patent, that it was improperly used in support of a rejection under 35 U.S.C. § 103, because it did not issue prior to Harry's filing date. This court has often answered that argument before. The Ernestus patent's filing date antedates any date on which appellant can rely and that is enough. In re Seid, 161 F.2d 229, 34 CCPA 1039, and cases there cited; In re Gregg, 244 F.2d 316, 44 CCPA 904, and In re Kander, 312 F. 2d 834, 50 CCPA 928.
As was pointed out in the Gregg case, it had become settled, at least in this court, prior to the 1952 Patent Act "that a patent issued on an application which was copending with that of another applicant could properly be used as a reference against the claims of the other applicant even though it did not disclose everything claimed, and it was necessary to combine it with other references." (Emphasis added.) When a reference...
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