Application of Josserand

• Decision Date: 10 April 1951
• Docket Number: Patent Appeals No. 5779.
• Citation: 89 USPQ 371,188 F.2d 486
• Parties: Application of JOSSERAND.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

89 USPQ 371, 188 F.2d 486 (1951)

Application of JOSSERAND.

Patent Appeals No. 5779.

United States Court of Customs and Patent Appeals.

April 10, 1951.

Lester B. Clark, Houston, Tex. (Charles W. Rivise, Philadelphia, Pa., Gustave Miller, Washington, D. C., Ray L. Smith, Houston, Tex., and Caesar & Rivise, Philadelphia, Pa., of counsel), for appellant.

E. L. Reynolds, Washington, D. C., for Commissioner of Patents.

Before GARRETT, Chief Judge and JACKSON, O'CONNELL, and JOHNSON, Judges.

GARRETT, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner, hereinafter referred to as the examiner, of all the claims, numbered 22 to 27, inclusive, of appellant's application for patent bearing the broad title "Drive-In Theater."

The rejection was based on the ground of public use found by the tribunals of the Patent Office, as the result of an inquiry in a public use proceeding, to have occurred more than two years before appellant filed his application.¹

Appellant's application has resulted in much controversy, phases of which have been passed upon by this court in two prior decisions.

The application, serial No. 301,713, was filed in the Patent Office October 28, 1939, and on February 27, 1940, an interference, No. 78,008, embracing a single count, was declared between it and an application "for Drive-In Theaters" of Samuel Herbert Taylor, Jr., which had been filed August 19, 1938.

The count which stemmed from claim 3 in the Taylor application was suggested to Josserand by the examiner and copied for the purpose of an interference.

Taylor, of course, was the senior party.

The count, which finally became claim 22 in the application now before us ex parte, read: "In a drive-in theater a plurality of inclined parking ramps for elevating the front ends of automobiles parked in said theater, a plurality of inclined drive-over ramps merging with the higher portions of said parking ramps, and a plurality of driveways, each of said driveways merging with the lower portion of one of said drive-over ramps on one side thereof and with the lower portion of one of said parking ramps on the other side thereof."

After various preliminary motions and actions in the Patent Office, unnecessary to be recited here, testimony was taken on behalf of the respective parties, and the case was heard by the Board of Interference Examiners which, on January 16, 1942, rendered a decision awarding priority to the party Taylor. The party Josserand sought a rehearing, which was denied February 23, 1942, and on March 10, 1942, an appeal was taken to this court.

On July 6, 1943, we rendered our decision, in an opinion written by the late Associate Judge Charles S. Hatfield, reversing the decision of the board and awarding priority to the party Josserand. We held, in effect, that the weight of the evidence clearly established conception by him as early as July 5, 1934, with reduction to practice during the period from July 5, 1934, to July 25, 1934, by the construction of a so-called drive-in theater, corresponding to the count, on the beach outside the sea wall of the city of Galveston, Texas. Josserand v. Taylor, 138 F.2d 58, 31 C.C.P.A., Patents, 709. A petition for rehearing, duly filed by the party Taylor, was denied October 4, 1943, without opinion, and on October 13, 1943, the case with conventional mandate was returned to the jurisdiction of the Patent Office.

It may aid in clarifying the "background" situation pertaining to the case to state that the party Josserand, in his preliminary statement, dated March 25, 1940, alleged conception with disclosure to others on or about July 1, 1933, and claimed: "* * * That the invention was reduced to practice on or about the month of December, 1933 by the filing of an application for patent embodying the invention and that since that time actual theaters constructed in accordance with the invention have been made and used * * *."

Seemingly the application so referred to matured into a patent (No. 2,102,718) issued December 21, 1937, and Josserand sought to obtain a reissue of it by an application filed December 19, 1939.

Also on May 3, 1940, after the interference had been declared on February 27, 1940, Josserand sought to have his reissue application substituted in the interference and, since he would thereby become the senior party, moved to shift the burden of proof to the party Taylor.

Had his efforts in this regard met with success, apparently he would have been entitled to constructive reduction to practice by the filing of the application, in December 1933, which matured into patent No. 2,102,718, but the examiner held that neither the patent nor the reissue application disclosed the subject matter of the count, refused the motion to substitute, and denied the motion to shift the burden of proof.

Aside from the effort to secure substitution so made, Josserand made no effort to establish by evidence either conception or reduction to practice earlier than the dates awarded him by our decision in Josserand v. Taylor, supra, when the activities took place on the Galveston beach in July 1934.

No question of public use was suggested in the interference controversy, but in October 1943 the party Taylor, acting under Patent Office old Rule 11 (now embodied in new Rules 291 and 292, 35 U.S.C.A. Appendix), filed a petition to the Commissioner of Patents for the institution of public use proceedings.

The petition was opposed by the party Josserand and was referred to the Board of Interference Examiners which recommended that it be granted and referred it to the Primary Examiner, who fixed times for taking testimony.

Testimony was introduced by both Josserand and Taylor, and after the taking of testimony had been concluded the party Taylor, on March 4, 1946, filed in this court a petition that we reopen the interference case and change our decision of July 6, 1943, Josserand v. Taylor, supra, or, in the alternative, that we authorize the Patent Office to reopen it.

The petition alleged, in substance, that the party Josserand perpetrated a fraud upon this court in the interference proceeding as shown by the testimony taken in that proceeding when compared with, or supplemented by, that taken in the public use proceeding.

It should be distinctly understood that Taylor's petition filed with this court did not seek a ruling on the question of public use. The party Taylor, of course, could not derive any advantage for his application from a ruling that the structure had been in public use more than two years before he had filed his application. So obviously, he sought a public use proceeding in order to introduce evidence upon which, when taken in connection with the evidence presented in the interference proceeding, a finding of fraud might be predicated.

Also, it should be borne in mind that the petition of the party Taylor was not presented to any tribunal of the Patent Office, but was presented de novo to this court.

It appeared that action in the Patent Office under the mandate following our decision of July 6, 1943, in the interference proceeding had been suspended awaiting the outcome of the public use proceeding. So, the petition for reopening the interference controversy was set down for argument, and was heard by us, on the first day of our 1946-7 term — that is, on Monday, October 7, 1946.

Our decision, also written by the late Associate Judge Hatfield, denying the petition was rendered November 4, 1946, Josserand v. Taylor, 159 F.2d 249, 34 C.C. P.A., Patents, 824.

From the opinion we quote the following paragraphs:

"* * * The petition, although not so denominated, is in effect a bill of review or an application for leave to file a bill of review in the Patent Office, it being claimed that the party Josserand perpetrated a fraud upon this court in the interference proceeding in which priority of the invention, defined by the count in issue, was awarded to him.

* * * * * *

"We have given most careful consideration to the issues presented by counsel for appellee, in view of the seriousness of the charges presented, but are of opinion that the record before us wholly fails to establish that appellant Josserand either `confessed' or `virtually confessed' that he committed a fraud on this court, or that he repudiated his testimony or that of his witnesses in the interference proceeding or that any fraud was committed by appellant Josserand as to any material issue in that proceeding. In so holding we are not unmindful of the rule that, if the court had any serious doubt as to whether appellant Josserand perpetrated a fraud, extrinsic or collateral to the issues determined in the interference case, or if the question of such fraud was difficult of ascertainment, it would be the duty of the court to grant appellee's application for leave to file a bill of review in the Patent Office.

"It should be understood that the issue of public use by the party Josserand of the invention defined by the count involved in the interference was not before us in the interference case, nor is it present in the instant proceeding, and that nothing that the court has stated in either decision should be considered as an expression of opinion of its views in regard to that issue."

Our decision denying the petition, accompanied by a copy of the opinion, was certified to the Commissioner of Patents December 12, 1946. Since the petition was presented to us, de novo, there was no occasion for the issuance of any mandate or order to the Patent Office, and none was issued.

We find in the record of the instant case a decision of the examiner under date of August 9, 1946, wherein proceeding ex parte, he rejected seven of the eighteen claims then embodied in Josserand's application on the ground of prior public use. It is stated therein, in substance, that the claims previously had been discussed by...