Bartsch v. Baker, 4638

• Decision Date: 02 April 1943
• Docket Number: 4639.,No. 4638,4638
• Citation: 134 F.2d 487
• Parties: BARTSCH v. BAKER. BAKER v. BARTSCH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

134 F.2d 487 (1942)

BARTSCH v. BAKER.

BAKER v. BARTSCH.

Nos. 4638, 4639.

United States Court of Customs and Patent Appeals.

December 26, 1942.

Rehearing Denied April 2, 1943.

Joshua R. H. Potts, Eugene V. Clarke, and Basel H. Brune, all of Chicago, Ill., for Bartsch.

S. Warwick Keegin, of Washington, D. C. (Semmes, Keegin, Beale & Semmes, of Washington, D. C., of counsel), for Baker.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

GARRETT, Presiding Judge.

These cases (consolidated below and disposed of in single decisions by the respective tribunals of the Patent Office) present appeals from the decision of the Board of Appeals affirming that of the Examiner of Interferences in an interference declared by the Primary Examiner which, in its final form, involved two counts reading as follows:

"1. A dish for maintaining food at a desired temperature comprising a body of pottery or like material having an annular upper surface, a side wall and a base, a metallic fluid container attached to the pottery body to form a fluid retaining cavity, an annular ridge on the outside of the pottery body below the upper surface, the upper edge of said metallic fluid container being crimped over the annular ridge so that it lies below the upper surface and forms a tight fit with the pottery body out of normal contact with food during use and serving to maintain the container and pottery body in assembled position, said annular upper surface of the body having a filling opening therethrough adapted to be closed in use.

"2. A dish for maintaining food at a desired temperature comprising a body of pottery or like material having an annular upper surface, a side wall and a base, a metallic fluid container attached to the pottery body to form a fluid retaining cavity, an annular ridge on the outside of the pottery body below the upper surface, the upper edge of said metallic fluid container being crimped over the annular ridge so that it lies below the upper surface and forms a tight fit with the pottery body out of normal contact with food during use and serving to maintain the container and pottery body in assembled position, said fluid retaining cavity having a filling opening adapted to be closed in use."

The decision appealed from awarded priority as to count 1 to the party Baker, and the party Bartsch appealed as to that award. Priority as to count 2 was awarded to the party Bartsch, and the party Baker appealed as to that award.

The interference was declared between applications. The application of Bartsch (serial No. 237,569) was filed October 28, 1938. The application of Baker (serial No. 242,409) was filed November 25, 1938. So, the burden rested upon Baker as the junior party to establish priority by a preponderance of the evidence.

It may be said that count 1 was suggested to the parties by the examiner under Patent Office rule No. 96, while count 2 was suggested by the party Bartsch.

The following descriptive matter is quoted from the decision of the Examiner of Interferences:

"This interference relates to a dish for maintaining food at a desired temperature. The type of dish disclosed in the applications of the parties consists of a food containing part set into and sealed to a metal jacket in such manner that a cavity is provided between the food containing part and the jacket. A suitable opening leading into the cavity and a closure member therefor permit filling the cavity with hot water for supplying heat to food placed in the food containing part, and closing the opening when the dish is in use.

* * * * *

"The devices disclosed in the involved applications of the parties are `baby dishes' or dishes designed to be used in feeding babies or small children, but the counts are not limited to dishes of that type. The party Bartsch, therefore, has taken considerable testimony with respect to the making, testing, and selling of a number of different types of utensils which have certain features in common with the devices disclosed in the applications, but which are not designed for use as baby dishes. None of the testimony introduced for this purpose has been attacked by the party Baker in respect to its probative force, and certain facts are deemed to be so clearly established thereby as to require no extended discussion."

It will be observed that count 1 contains a limitation reading "said annular upper surface of the body having a filling opening therethrough adapted to be closed in use," and count 2 contains the limitation "said fluid retaining cavity having a filling opening adapted to be closed in use." Since the location of the filling opening, as stated in count 2, is not confined to the annular upper surface of the food containing part that count obviously is broader than count 1.

Both parties took testimony and the evidence introduced includes numerous documentary and physical exhibits so that the record in the case is quite voluminous. It was reviewed at length by both the Examiner of Interferences and the board. Notwithstanding the extensive record, the issues, in the final analysis, are comparatively simple and, under the view which we take of the case, it is not necessary for us to set forth an extensive review of the evidence.

It will be conducive to clearness, however, to state, at this point, something of the background of the respective parties. During the period here pertinent the party Baker was sales promotion manager for Gerber Products Company (to which his application is assigned), a company engaged in the manufacture and sale of foods, particularly foods for infants and small children. It appears that it was the practice of the company to offer premiums to purchasers as an incentive to promoting sales, and the party Baker in 1937, or at least by 1938, became interested in the development of a dish for premium purposes in which such foods might be maintained at a desired temperature. His activities in this regard will be later discussed in more detail.

The party Bartsch was engaged in the manufacture of articles of aluminum ware, such as a specially designed pie plate, a whistling teakettle, an aluminum milk warmer, etc., and in 1937 he manufactured certain beverage warmers for a concern known as the KrimKo Company. Exhibits illustrative of such articles were placed in evidence. The first meeting between Baker and Bartsch seems to have taken place in August 1938 when the latter visited the former at his place of business seeking to interest him in a device or devices for premium use. Such details relating to this occurrence as are necessary will be set forth hereinafter.

At the hearing the question of originality was raised by both parties as to count 1 and the tribunals below agreed in holding that the feature of that count expressed in the limitation relative to the opening through which the fluid is introduced into the cavity between the pottery body and the metal part being located in the annular upper surface of the pottery body, was the conception of the party Baker and that the party Bartsch derived the same from him.

This holding upon the question of originality was limited to count 1, and it was held by both tribunals that, as expressed by the board: "* * * if it should be decided that Baker did not disclose to Bartsch the real essence of count 1, then priority should be awarded to Bartsch on the ground that although Baker might be held the first to conceive this count, he would be the last to reduce to practice and there is no satisfactory showing of diligence."

As to the broader count (No. 2) both tribunals, under the construction which they placed upon it, held that the party Bartsch had reduced the invention therein described to practice prior to the earliest activity claimed by the party Baker. The holding was based upon the production by Bartsch of devices illustrated by Bartsch's exhibits 1, 3, 7, and 14 (frequently referred to in the record as "KrimKo cookers"), during the year 1937. The Examiner of Interferences stated:

"The various structural limitations of count 2 are fully supported by Bartsch exhibits 1, 3, 7, and 14, and it must be concluded, therefore, that Bartsch reduced the invention of count 2 to practice at least by the end of 1937. This date is prior to the earliest date alleged in Baker's preliminary statements, and Bartsch is, therefore, entitled to prevail as to count 2."

The contention made on behalf of the party Baker with respect to count 2, which most logically may be first considered, is that the introductory phrase "A dish," etc., is a material limitation, and that the devices manufactured and marketed by the party Bartsch in 1937 do not support count 2. Specifically it is...