Burson v. Carmichael, 83-1233
| Decision Date | 03 April 1984 |
| Docket Number | No. 83-1233,83-1233 |
| Citation | 731 F.2d 849,221 USPQ 664 |
| Parties | Bob O. BURSON, Appellant, v. Thomas F. CARMICHAEL, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Donald R. Dunner, Washington, D.C., argued for appellant. With him on brief was Barry W. Graham, Washington, D.C.
William L. Anthony, Jr., San Francisco, Cal., argued for appellee.
Before MARKEY, Chief Judge, DAVIS, Circuit Judge, and FORD, Judge. * MARKEY, Chief Judge.
Appeal from a decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (Board) awarding priority of counts 5-8 to senior party Carmichael. We reverse.
The following time line summarizes the relevant dates:
S.N.460,271 S.N.660,122 '088 S.N.888,557 '201 Int. Amendment
Claims
CARMICHAEL Filed Filed Issued Filed Copied Decla- Filed
red
4/12/74 2/23/76 11/1/- 3/20/78 7/18/78 2/8/79 4/25/83
77
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1/8/74 1/10/74 4/29/75 7/19/77
BURSON Alleged Alleged
S.N.572,908
'201
Conception R to P Filed Issued
Carmichael filed application S.N. 460,271 on April 12, 1974, claiming a capacitor discharge ignition system. On February 23, 1976, Carmichael filed application S.N. 660,122, also claiming a capacitor discharge ignition system. U.S. patent 4,056,088 ('088) issued November 1, 1977, on S.N. 460,271. Carmichael filed application S.N. 888,557, a continuation of S.N. 660,122, on March 20, 1978, and abandoned S.N. 660,122.
Burson alleges conception on January 8, 1974, and reduction to practice two days later of a capacitor discharge ignition system. He filed application S.N. 572,908 on April 29, 1975. On July 19, 1977, U.S. patent 4,036,201 ('201) issued on that application.
On July 18, 1978, Carmichael amended S.N. 888,557, adding claims copied from Burson's '201 patent. The Board mailed a declaration of interference on February 8, 1979, naming Carmichael as senior party and according S.N. 888,557 the benefit of the filing dates of S.N. 660,122 and S.N. 460,271.
On April 25, 1983, after final hearing before the board, Carmichael was permitted to amend abandoned S.N. 660,122, adding a statement that that application was a continuation in part (CIP) of S.N. 460,271. 1 Application S.N. 460,271 is therefore referred to here as the "grandparent", and S.N. 660,122 is referred to as the "parent" of application S.N. 888,557.
As above indicated, the board awarded priority to Carmichael.
The invention of the counts (see Appendix to this opinion) is best understood by reference to figures 1 and 3 from Burson's '201 patent.
A breakerless capacitor discharge ignition system has a permanent magnet 14 mounted in a nonmagnetic flywheel 22. The flywheel 22 is attached by shaft 24 to an engine (not shown) and rotates with the engine shaft.
A magnetic core 36 has poles 40, 42, and 44 spaced along the circular path of magnet 14. The center pole 42 carries a primary winding 48, surrounded by a secondary winding 50, and a charging winding 52 spaced therefrom.
The invention of the counts is represented electrically by figure 7 of the '201 patent.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Referring to Figure 7, magnetic flux flows during the first half cycle of operation from the magnet's north to its south pole (down core pole 40 and up core pole 42) inducing voltage EG in charging winding 52 and voltage Ep in primary winding 48. The positive voltage EG passes through diode 82 to charge capacitor 66 to voltage EC . During the second half cycle of operation, magnetic flux flows down core pole 42 and up core pole 44 and voltage Ep becomes positive, with respect to control electrode 86 of silicon control rectifier (SCR) 68, providing a trigger signal to turn SCR 68 "on". That "on" condition allows voltage EC , held in capacitor 66, to discharge in the form of current flowing through primary winding 48. That burst of current generates magnetic flux which induces a high output voltage across secondary winding 50 to fire spark plug 90.
Because charging winding 52 acts as a shorting coil for the primary flux, it tends to reduce the generation of a high voltage output in secondary winding 50 during discharge of capacitor 66. To minimize that effect, charging winding 52 is physically offset from primary winding 48 and secondary winding 50, thus reducing flux linkage with those windings.
Carmichael's Grandparent
The grandparent on which Carmichael relies for its April 12, 1974 filing date, discloses a capacitor discharge ignition system best represented by figure 1 of the '088 patent.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
A U-shaped core 22 has a pole 22a (carrying a primary winding 24p and a secondary winding 24s) and a pole 22b (carrying a charging winding 26). A flywheel 16 carries the poles 18 and 20 of a magnet past core poles 22a and 22b as the flywheel rotates with an engine shaft.
The system disclosed in the grandparent operates as does Burson's to fire a spark plug (28), and the parties agree that the two systems are electrically equivalent.
Burson argued to the board, inter alia, that Carmichael is not entitled to the benefit of his grandparent's filing date because that application does not disclose a charging and primary winding wound on "one core portion". The board decided that Carmichael was entitled to rely on the grandparent's filing date because "one core portion" was not restricted to one pole.
Issues 2
(1) Whether Carmichael is entitled to rely on the filing date of his grandparent application.
(2) Whether remand is appropriate.
OPINIONHaving copied the claims from Burson's '201 patent to invoke an interference, Carmichael must show by clear and convincing evidence that the disclosure on which he relies supports the copied claims which became the interference counts. Snitzer v. Etzel, 531 F.2d 1062, 1063, 189 USPQ 415, 417 (CCPA 1976).
Carmichael relies on the grandparent's disclosure, supra, of a U-shaped magnetic core with charging and primary windings on different poles as support for the limitation of count 5 that those windings be on "one core portion." Thus Carmichael urges a broad, and Burson a narrow, interpretation of "one core portion". Resolution of that issue determines whether Carmichael can rely on his grandparent's filing date.
To determine the meaning of "one core portion", resort must be had first to the '201 patent. Sockman v. Switzer, 379 F.2d 996, 997, 54 CCPA 1563, 154 USPQ 105, 106 (1967).
The figures of the '201 patent, supra, and its description of the illustrated embodiment show and describe a single pole carrying the charging, primary, and secondary windings. Indeed, the entire thrust of Burson's '201 patent is a capacitor discharge ignition system mounted on a single pole of a magnetic core.
Carmichael points to this in the '201 patent:
[a] core of ferromagnetic material is mounted adjacent the path of the magnet and has one pole or other portion through which a changing amount of flux from the magnet passes each time the magnet moves past the core. (emphasis added).
Carmichael says "other portion" in that excerpt means "distinct from one pole," i.e., two poles. Burson says "other portion" means the interconnecting portion between the two poles of a U-shaped core. Carmichael's broad reading conflicts with, and is clearly not supported by, the '201 specification which is directed throughout to a single pole configuration.
Pointing to original claim 2 (cancelled during prosecution) which states "... said one portion of said core being one of said plurality of poles", Carmichael says the claim would be meaningless if "one core portion" means one pole. We disagree. Because "one core portion" is readable on either one pole or on the one interconnecting portion between two poles, that dependent claim is not meaningless.
Nor does a review of the relevant file history provide support for Carmichael's broad interpretation. In arguing that Burson could have amended the claim to recite that all of the windings were on one pole, but intentionally chose broader language, Carmichael mischaracterizes Burson's intent. In response to the second office action Burson added the word "radially" to describe the offset between the primary and charging windings and thereby further defined "one core portion". The materiality of "radially" need not be reached but its addition undermines Carmichael's assertion that Burson chose broad language and intentionally failed to narrow it during prosecution.
In response to that second office action, Burson also stressed functional over structural aspects of his invention. Carmichael says that was an attempt to redirect the thrust of the invention, but Burson had already stressed the structural aspects in response to the first office action:
The heart of Applicant's invention is a very simple capacitor discharge system comprised of only three coils all mounted on a single pole or other portion of a ferromagnetic core...
There is no requirement that arguments once made be repeated.
Lastly, Carmichael says his core is the functional equivalent of Burson's. The assertion misses the mark. The controlling issue is whether Carmichael's initial disclosure provides support for the copied claims and the specific limitation controlling that issue is structural, not functional.
Carmichael's parent application (filed February 23, 1976) did disclose charging and primary...
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