Brand v. Thomas

• Citation: 25 CCPA 1053,96 F.2d 301
• Decision Date: 25 April 1938
• Docket Number: Patent Appeals No. 3927.
• Parties: BRAND v. THOMAS.
• Court: United States Court of Customs and Patent Appeals

25 CCPA 1053, 96 F.2d 301 (1938)

BRAND v. THOMAS.

Patent Appeals No. 3927.

Court of Customs and Patent Appeals.

April 25, 1938.

C. B. Des Jardins, of Washington, D. C. (George Ramsey, of New York City, and Church & Church, of Washington, D. C., of counsel), for appellant.

H. Frank Wiegand, of New York City (Edwin R. Hutchinson, of Washington, D. C., and William Lang, of New York City, of counsel), for appellee.

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

BLAND, Associate Judge.

The junior party, Samuel Brand, has appealed here from a decision of the Board of Appeals of the United States Patent Office, affirming that of the Examiner of Interferences in awarding priority of invention in four counts of an interference proceeding to the senior party, Felix Thomas.

The four counts of this interference were copied by Thomas from the Brand patent, No. 1,917,356, issued July 11, 1933, on an application filed September 9, 1929, for a cash register. The Thomas application, serial No. 676,237, is a renewal of an application filed November 22, 1923, for "Accounting Apparatus."

Count 1 is illustrative of the four counts in issue and follows:

"1. In a machine of the class described, capable of transferring a total from any one of a plurality of a group of totalizers on a common axis to another totalizer on the same axis, the combination of a plurality of totalizers on a common axis; selecting means for said totalizers; auxiliary selecting means; controlling means to render said auxiliary selecting means effective; and means to render said controlling means effective." (Italics ours.)

The Brand patent discloses a mechanism by means of which amounts may be automatically transferred from any of a plurality of totalizers located all in one line to another totalizer known as the grand totalizer located on the same line.

The Thomas application discloses certain features relating to improvements in accounting apparatus in which amounts or totals from one accumulator are transferred to another by mechanism which is controlled by manually placed switches or electrical contacts.

The particular invention which is here in controversy relates to only a portion of the structure of each of the parties. It is very definitely stated in the counts and, in view of our conclusion, requires no further detailed explanation at this point.

Prior to the declaration of the interference, the Primary Examiner had ruled that the counts at bar, which were claims of the Brand patent, did not read on the Thomas disclosure. After much Patent Office action involving appeals, this ruling was not adhered to and the interference was declared.

Brand moved to dissolve the interference, asserting, inter alia, that the counts did not read on the Thomas disclosure. There were a number of other grounds for dissolution urged by Brand, most of which are sought to be presented here. Since our decision of the issue of priority turns upon and is controlled by our holding on the above-stated ground for dissolution, it is not necessary for the others to be stated.

Each of the counts in substance calls for, in combination, a group or plurality of totalizers on a common axis. It is the contention of Brand that the totalizers of Thomas are not on a common axis. The Brand specification, however, as is pointed out by the tribunals below, broadens the meaning of the term "on a common axis" to that which would result if the term read "in axial alignment" or as if the totalizers were on the same or substantially the same axial line. The Brand patent discloses that all the totalizers are on a common shaft and necessarily must be in exact alignment.

We think that the tribunals were correct in so interpreting the counts and the only question necessary for us to decide, in view of our conclusion, is whether or not Thomas discloses his totalizers to be in axial alignment.

Appellant has urged, and we think correctly, that under the circumstances of this case the burden was upon Thomas to show that he had clearly disclosed the elements of the counts before he will be permitted to extract from an issued patent the invention at bar. Cooper v. Downing, 45 App.D.C. 345; Lindley v. Shepherd, 58 App.D.C. 31, 24 F.2d 606; Steenstrup v. Morton, 58 App.D.C. 343, 30 F.2d 867.

While it is true that at one time during the prosecution of the Thomas application it was held in the Patent Office that Thomas did not disclose the structure of the counts, there are now before us concurring decisions to the contrary, and, under such circumstances, a highly technical question being involved, the usual rule relating to concurring decisions applies and the decision of the Board of Appeals will not be reversed unless it is manifestly erroneous. On the subject of the Thomas disclosure showing his totalizers as being in axial alignment, the Board said:

"In the Thomas application as filed, there is no description of the totalizers as being in axial alignment and no showing which necessarily involves such a relationship. Moreover, it is not essential to the operativeness of the Thomas apparatus that these totalizers be in axial alignment. Fig. 1b shows three groups of totalizers, the totalizers of each group being in axial alignment and the various groups being apparently in the same relation. The totalizers of each group are driven from a shaft which is common to all groups and the read-out switches are likewise carried by a shaft which is common to all groups of totalizers. Italics ours

"Appellant urges that, even if Fig. 1b be construed to disclose the actual arrangement of the parts rather than the diagrammatic relation, the totalizers of the various groups might still be out of alignment. We agree with appellant that this is true. However, from the showing of Fig. 3 and from the showing of...