Bennett v. Serota, Patent Appeal No. 8782.
| Decision Date | 24 May 1973 |
| Docket Number | Patent Appeal No. 8782. |
| Citation | 477 F.2d 1385 |
| Parties | William N. BENNETT, Appellant, v. Rudolph M. SEROTA, Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Morris I. Pollack, attorney of record, for appellant.
John W. Renner, Charles B. Lyon, Donald D. Jeffery, Cleveland, Ohio, attorneys of record, for appellee.
Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
This is an appeal from the decision of the Board of Patent Interferences awarding priority of invention to Serota, the junior party, as to two counts relating to an apparatus for heating a traveling web of dielectric material1 such as paper. We affirm that decision.
The senior party Bennett became involved in this interference on his application serial No. 368,455 filed May 15, 1964. Serota became involved on his application serial No. 499,754 filed October 21, 1965, a continuation-in-part of an earlier application, serial No. 385,130, filed July 27, 1964.
At final hearing before the board, the attorney for Bennett stated that Bennett relied for priority solely on the filing of his application. Accordingly, the board restricted him to his May 15, 1964 filing date for both conception and constructive reduction to practice. The board held that Serota, as junior party, had met his burden of proof by showing an actual reduction to practice in January 1964. The board also held that Serota was entitled to prevail for the reason that Bennett was not an original inventor. In its view, the evidence was sufficient to show derivation of the invention by Bennett from Serota.
As originally declared, the interference involved a single count which corresponded to claim 34 of the Bennett application and claim 3 of Serota's application. Later a second count was added at the instigation of Serota. This count is in some respects broader than count 1. Since it is our view that Serota was entitled to priority as to count 1, we need not consider his allegation of an even earlier reduction to practice of count 2.
Count 1 reads as follows (subparagraphing ours):
A basic structure upon which this claim will read is shown in figures 1 and 2 of the Serota application which are reproduced below:
In those drawings rods 40 and 44 are electrodes. Rods 40 are grounded to the frame, whereas rods 44, in the same plane as rods 40, are connected to a fixed capacitor plate 42 which is insulated in its mounting in frame 10.
There is also provided a second capacitor plate 46 which can be adjusted vertically to vary the distance between it and plate 42. The adjustable capacitor plate is connected to the ungrounded terminal of a source of high-frequency electrical energy. The frame itself can be raised or lowered relative to the web of dielectric material passing over it.
In operation, a high-frequency voltage is delivered to the adjustable plate which induces voltage in the fixed plate and rods 44. This voltage creates a difference in potential between rods 44 and 40 thereby generating an electric field between them which is in the same plane as a web (not shown) passing over the electrodes. This electric field creates the dielectric heating2 effect in the web.
The record establishes that Serota began investigating the phenomenon of dielectric heating as early as 1959. During that time he designed a test apparatus for drying continuous webs of dielectric material. This apparatus was used to demonstrate to potential customers the feasibility of using dielectric heating for drying webs. Although not intended for commercialization, this test rig is the basis of Serota's claim to a reduction to practice of count 2.
This apparatus was in fact a modified conventional dielectric oven. Two sets of electrode rods were assembled so that one set was interposed and in the same plane as the other, as is called for by count 1. The assembled electrodes were inserted in the oven in a way that one set was grounded and the other insulated from the oven which functioned as a frame. The electrode assembly included a capacitor plate located above and parallel to the plane of the electrode rods. It was electrically connected to one set of electrode rods and functioned in the same way as that of the first capacitor plate of count 1. However, it will be noted that in count 1 this plate is below the electrode rods. Above this plate was a second capacitor plate, a part of the oven, which could be energized and adjusted vertically relative to the first plate by means of a pulley arrangement. In operation the web to be dried passed over the electrode rods. The board said of this device:
* * * we find that the structure shown in those exhibits, shown in one exhibit in use with a conventional oven, does not support the counts here in issue. We note, however, that the applicator included a system of alternately grounded and energized electrodes all in a single plane disposed to one side of the web of material to be dried, as in the invention in issue.
In addition, we note that this structure also embodies the concept of a fixed capacitor plate in which a voltage can be induced by a movable capacitor plate. However, of necessity the web had to pass over the rods but under the first capacitor plate. That Serota was indeed the originator of this apparatus was corroborated by testimony of his assistant, Zimmerly.
The record further reveals that Serota traveled to the Fitchburg Paper Co., the assignee of the Bennett application, at its request to discuss the acquisition by Fitchburg of some radio frequency generating equipment from Young Brothers Co., Serota's employer and assignee of his application. This trip took place on April 10, 1963.
Serota testified that on this visit he met Bennett, his adversary in this case, and learned that Bennett was constructing some sort of dielectric heating apparatus for Fitchburg that required the generating equipment referred to above. When it was learned that Young Brothers could not provide this equipment, Serota was engaged to be a consultant for Fitchburg.
Serota further testified that Bennett's apparatus, which he saw on this or a later trip, was the same as that illustrated in a patent Bennett later acquired, U.S. 3,266,164 (Exh. 7). This device is quite different from that which is involved in this interference. In particular, the electrode rods do not lie in the same plane. Instead, they are in parallel rows and offset from each other. Because of this arrangement, the web to be dried had to pass between the rows of electrodes rather than over them. We also note that this apparatus did not use a pair of capacitor plates, one of which is movable relative to the other. That Bennett was engaged at this time in building such an apparatus is corroborated by the testimony of Bennett's witness LaBlanc.
The record further reveals that Serota made numerous visits to Fitchburg after his retention as a consultant. LaBlanc testified that Serota went to Fitchburg over the years 30 or 40 times, and that their first meeting was in 1963. Serota testified that, as a result of his association with Fitchburg, it was decided that Serota and Young Brothers would "design and build" a unit to replace the one he had seen at Fitchburg, for the reason that the parties had been unable to make the Bennett apparatus work successfully.
Although Serota was unable to say precisely when this decision was made, he submitted various documents (Exhs. 11-15, 17, 18) to substantiate this claim and which indicate that an apparatus was eventually shipped to Fitchburg. The board summarized these exhibits as follows:
To continue reading
Request your trial
-
Stanley Works v. McKinney Mfg. Co.
...Suska's testimony.11 See Bell Telephone Laboratories, Inc. v. Hughes Aircraft Co., 564 F.2d 654, 657 (3d Cir. 1977); Bennett v. Serota, 477 F.2d 1385, 1390-91 (C.C.P.A.1973). Accordingly, I find December 30, 1971 as the date of reduction to practice of Stanley's concealed switch hinge as di......
-
In re Reuter
...of reduction to practice is required (Mikus v. Wachtel, 542 F.2d 1157, 191 USPQ 571 (Cust. & Pat.App.1976); Bennett v. Serota, 477 F.2d 1385, 177 USPQ 753 (Cust. & Pat.App.1973)) in order to confirm the testimony of the inventor (Beeber v. Krogh, 56 CCPA 880, 403 F.2d 743, 159 USPQ 594 (196......
-
Bell Tel. Laboratories, Inc. v. Hughes Aircraft Co., 77-1061
...of the case. Mathieson Alkali Works v. Crowley, 78 U.S.App.D.C. 163, 164, 138 F.2d 281, 282 (1943); Bennett v. Serota, 477 F.2d 1385, 1390-1391 (Cust. & Pat.App.1973). Here the district court found that the testimony of the Bell inventors as to their work in reducing their invention to prac......
-
Randolph v. Shoberg
...to Randolph's previously mentioned tests with the 20 pound weight because these tests were uncorroborated. Bennett v. Serota, 477 F.2d 1385, 177 USPQ 753 (Cust. & Pat.App.1973). 4 Dickinson stated in his declaration that he observed a "direct, proportional electrical read-out" as a result o......