Binstead v. Littmann
| Decision Date | 29 March 1957 |
| Docket Number | Patent Appeal No. 6240. |
| Citation | 44 CCPA 839,242 F.2d 766 |
| Parties | Hugh Cecil BINSTEAD and Henry James Stockwell, Appellants, v. Hans LITTMANN and Brüno Müller, Appellees. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Amasa M. Holcombe, Washington, D. C. (Joseph F. Brisebois, Washington, D. C., of counsel), for appellants.
Mason, Kolehmainen, Rathburn & Wyss and Walther E. Wyss, Chicago, Ill., for appellees.
Before JOHNSON, Chief Judge, and WORLEY, RICH and JACKSON, retired, Judges.
This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention, as claimed in the single count hereinafter set forth, to the junior party.
Involved in this interference are applications No. 140,104, filed January 23, 1950, by Hugh Cecil Binstead and Henry James Stockwell (hereinafter referred to as Binstead) and No. 155,136, filed April 11, 1950 by Hans Littmann and Brüno Müller (hereinafter referred to as Littmann). Littmann being the junior party and the applications being co-pending, Littmann has the burden of proving his case by a preponderance of evidence.
The single count in issue reads as follows:
"In an ophthalmic apparatus of the character described having a base, a head rest on said base, a pivotally mounted illuminating device and a pivotally mounted observation microscope device adapted for observing the cornea and interior and posterior sections of the eye to be examined, an arm carrying said illuminating device, and another arm carrying said microscope device, both arms being disposed on said base rotatable about a common vertical axis traversing the head rest at the locus at which the pupil of the eye to be examined is to be located, said pivoted illuminating device containing in a vertically arranged housing a light source and optical means comprising lenses and reflecting means for projecting light from said source in substantially horizontal direction onto the eye to be examined, said pivoted microscope having objective and eyepiece lenses, the distance between said locus of observation and said illuminating device being shorter than the distance between said locus and said microscope device, and both said devices being constructed and disposed on the respective arms to obtain sufficient spatial distance between each other in all operative positions of the illuminating device and the microscope device including the special operative position where the illumination and observation directions coincide."
The invention relates to optical apparatus of the kind commonly known as a "slit lamp," for microscopic examination of the human eye under illumination. To avoid prior art difficulties whereby the are of movement of the microscope was limited by the obstruction in its path created by the presence of the illuminating device, the instant apparatus is so constructed that the illuminating and microscope devices are each individually supported by distinct arms, each separately rotatable about a common vertical axis coincident with the eye to be examined. The distance between the illuminating device and the axis of rotation is shorter than that between the microscope and said axis to enable the microscope to be swung in an arc free from obstruction by the illuminating device. The objective of the illuminating device is so constructed (Littmann utilizes a prism whereas Binstead uses a partially transparent reflector) as to permit use of the apparatus in the position in which the illumination and observation directions coincide.
Both parties reside and made their inventions abroad, and each claims the benefit of a foreign application to establish priority of invention.
The party Littmann relies upon a patent application (p 53980 IXa/42 h D) filed in Germany on September 5, 1949. In the Patent Office, Binstead moved to dissolve the interference on the ground that neither the domestic nor foreign applications of Littmann contained disclosure adequate to support the here involved count. This motion was denied, the board finding that each of the applications supported the count, and the date of September 5, 1949, was accordingly granted to Littmann for conception and constructive reduction to practice of the invention. Binstead assigned as error in his reasons of appeal this action by the board, but neither in his brief nor in oral argument was the point vigorously asserted. In the view we take of this case, it will be unnecessary to decide the question raised by this point.
The priority papers filed by Binstead include a provisional specification and a complete specification with drawings, both specifications having been filed in connection with the application for British patent No. 2,033 of 1949. The board held, and Littmann concedes, that Binstead is entitled to the benefit of the filing date, January 19, 1950, of his complete British specification. Binstead was accordingly granted that date by the board for conception and reduction to practice of the invention. Littmann having established an earlier date, however, (and we will assume for purposes of this decision that Littmann is entitled to said date) Binstead attempted before the board to gain the benefit of the date of the provisional specification, which date is January 25, 1949.
The board was of the opinion that the provisional specification failed to disclose "an arm carrying said illuminating device" or a "base," both of which are recited as positive elements in the count. The board was further of the opinion that "* * * the count recites the head rest and the arms as being `on said base', and `on' has been held to require a particular relationship * * *."
In addition to the lack of disclosure of the provisional specification found by the board, Littmann here asserts that there is not adequate disclosure in the provisional specification to support the portion of the count relating to the "special operative position where the illumination and observation directions coincide" (the last full phrase in the count).
As to the foregoing argument of Littmann, Binstead contends that "only such points as were ruled on by the board adversely to appellants need be considered by this court" and that therefore Littmann's argument may not be here considered, citing Bergstrom and Trobeck v. Tomlinson, 220 F.2d 766, 42 C.C.P.A., Patents, 852 (incorrectly cited by Binstead as Olaf, Bergstrom & Tobrek v. Tomlinson & Tomlinson). For purposes of this decision we will assume, without deciding, that we may here consider the argument advanced by Littmann.
The issue before us, therefore, is whether or not the provisional specification of Binstead's British application contains disclosure adequate to support the here involved count.
We are of the opinion that it does and that, therefore, the party Binstead must be awarded priority of invention.
Considering at the outset the alleged lack of disclosure in the provisional specification of an "arm" which carries the illuminating device, Littmann places great emphasis on a statement in said specification that "The illuminating device comprises a lamp housing directly carried on the inner sleeve." (Emphasis added.) He concludes that this statement, short of evidencing the disclosure of an "arm," is positive evidence of the lack of such disclosure. A careful and reasonable reading of the specification in its entirety, however, clearly indicates the contrary.
The specification states:
"The apparatus according to the invention comprises a rest for locating the eye to be examined at the object position, a microscope for observing the object position mounted on a bracket rotatable about an axis approximately aligned on the object position the optical axis of the microscope being approximately at right angles to such axis of rotation, and means for illuminating the object position also rotatable about such axis of rotation and including an aperture, a source of light for illuminating the aperture and an...
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