Briggs v. Kaisling

• Decision Date: 03 April 1923
• Docket Number: 1552-1554.
• Citation: 288 F. 254
• Parties: BRIGGS et al. v. KAISLING (two cases). KAISLING v. BRIGGS.
• Court: U.S. Court of Appeals — District of Columbia Circuit

288 F. 254

BRIGGS et al. v. KAISLING (two cases).

KAISLING v. BRIGGS.

Nos. 1552-1554.

United States Court of Appeals, District of Columbia.

April 3, 1923

Submitted January 15, 1923.

Joseph H. Milans and Calvin T. Milans, both of Washington, D.C., for Briggs and Jacobi.

G. A Yanochowski, of Chicago, Ill., for Kaisling.

Before ROBB and VAN ORSDEL, Associate Justices, and SMITH, Judge of the United States Court of Customs Appeals.

ROBB Associate Justice.

These are appeals from decisions of the Patent Office in interference proceedings, and each involves an electrical switch of the type used to control the lighting, ignition and other circuits of a motor vehicle. A single record embraces all the evidence. Kaisling has one application involved, while the Briggs & Stratton Company is the assignee of all adverse interests covered by the other applications. It is apparent, therefore, that in substance and effect this is but a single case.

We first will consider Kaisling's contentions in appeal No 1553, wherein the tribunals of the Patent Office concurrently awarded priority to Briggs. There are here involved four claims, of which the first and fourth are illustrative, as follows:

'1. A switch comprising a base having contacts, a rotary switch member having contact means for engaging the contacts, a removable key for controlling the actuation of said switch member, and other switch contacts actuated by the removable key.'

'4. A lighting switch and an auxiliary switch for automobiles and the like, a removable actuating member for said auxiliary switch, and means controlled by said actuating member for rendering said lighting switch inoperative.'

Kaisling has been accorded August or early September of 1913 as his earliest date of conception, and his filing date of December 15, 1913, as his date of constructive reduction to practice, and these dates are unchallenged. Two applications of Briggs are here involved, dated March 8 and 15, 1915, respectively.

The Examiner of Interferences reviewed the evidence to the effect that in December of 1912 and February of 1913 drawings were made for Briggs, which were produced and identified by the party who made them and by the model maker, who built two switches (Exhibits Nos. 4 and 15) from them. These switches were shop-tested, and early in 1913 one like Exhibit No. 15 was installed on a car in Detroit, where it was successfully used for three or four months. While the Examiner was not satisfied with the evidence concerning this test, he was satisfied that a reduction to practice had been proven by the shop tests, and therefore awarded Briggs the date of March, 1913, for conception and reduction to practice. On appeal, the Examiners in Chief expressed themselves as convinced that the practical test in Detroit amounted to reduction to practice, and in this conclusion the Commissioner concurred.

We think this conclusion clearly right. In the first place, Exhibits Nos. 4 and 15 bear no evidence of having been tampered with, and the evidence concerning their construction is straightforward and free from any taint of suspicion. They represented, at the time they were made, the limits of the progress made by Briggs in the art. It is in evidence that a switch like Exhibit No. 15 was taken to Detroit by Mr. Briggs for the purpose of interesting the F. B. Electric & Manufacturing Company. Mr. John W. Fitzgerald, who was president and chief engineer of that company, a very intelligent and disinterested witness, testified to the installation and test of a switch which looked and operated like Exhibit No. 15, and there was evidence of a corroborative character which has been reviewed by the tribunals of the Patent Office. Mr. Fitzgerald testified positively that this switch was on the car three or four months. He described its operation in detail, stated that he rode in the car a number of times, and said that the switch 'did the work for which it was designed without any trouble. ' We regard the evidence concerning the identity of these exhibits and the reduction to practice of the invention as convincing.

After the completion of Exhibit No. 4, it was discovered that by partially inserting the key the switch could be turned to either position. Advantage was taken of this discovery in Exhibit No. 15, by so arranging the lock that the ignition switch could be moved by rotating the key in the same direction required to lock or unlock the switch. It therefore is apparent that whatever advantage springs from this change inures to the benefit of Briggs. Even though the particular advantage had not been appreciated at the time, nevertheless, had it been an inherent function of the device as designed and constructed, the inventor could not have been deprived of it. Morgan Engineering Co. v. Alliance Machine Co., 176 F. 107, 100 C.C.A. 30. Much less can an inventor be deprived of such advantage when he so reconstructs his device as to emphasize this advantage. We agree with the Patent Office, therefore, that Exhibit No. 15 clearly reads upon each of the claims of this particular issue.

Appeal No. 1554 involves the same application of Kaisling and a joint application of Briggs and Jacobi, the single count reading as follows:

'In a combination switch, a removable handle, switch contacts, a movable member for co-operation with said switch contacts, said movable member being controlled by said handle, and other switch contacts controlled by the turning of the attached handle.'

Exhibits Nos. 4 and 15, heretofore discussed, were relied upon by the joint applicants. The Patent Office tribunals entertained no doubt that these exhibits disclosed the invention expressed in this count, but, being of the view that the suggestions of Jacobi did not rise to the dignity of invention--in other words, that Briggs was the sole inventor-- awarded priority to Kaisling, notwithstanding that the invention clearly had been reduced to practice by Briggs prior to the entry of Kaisling into the field.

The sole object of an interference proceeding is 'to determine the question of priority of invention. ' R.S Sec. 4904 (Comp. St. Sec. 9449). ...