Crane v. Grier, Patent Appeal No. 3293.

• Decision Date: 12 June 1934
• Docket Number: Patent Appeal No. 3293.
• Citation: 21 CCPA 1163,71 F.2d 180
• Parties: CRANE v. GRIER et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

21 CCPA 1163, 71 F.2d 180 (1934)

CRANE v. GRIER et al.

Patent Appeal No. 3293.

Court of Customs and Patent Appeals.

June 12, 1934.

Harry S. Demaree, Earl Babcock, and William S. Hodges, all of Chicago, Ill., for appellant.

Robert R. Candor, of Dayton, Ohio, for appellees.

Before GRAHAM, Presiding Judge, and BLAND, GARRETT, and LENROOT, Associate Judges.

BLAND, Associate Judge.

This is an appeal by the senior party, Crane, 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 to John A. Grier, as sole inventor, the said Grier being one of the alleged joint inventors (Grier and Warren), the junior parties. The counts involved are five in number and were claims taken from the Crane patent No. 1,704,655, issued on March 5, 1929, on an application filed March 17, 1927. The joint application of Grier and Warren was filed March 31, 1927. It will be seen that Crane is senior by fourteen days, and that both applications were copending.

After the taking of testimony by Grier and Warren, a motion was made by them to substitute for the joint application a sole application of John A. Grier. Motion was also made to permit the amendment of the junior parties' preliminary statement so as to change the dates therein set out. The Examiner of Interferences granted the motion to substitute the sole application for the joint one, but denied the motion to change the dates.

It was held by the Examiner of Interferences and the Board of Appeals that said Grier had conceived the invention of the counts involved prior to the conception date set up in the preliminary statement of the party Crane, and that Grier was diligent in reducing the invention to practice. The exact dates for conception and reduction to practice of the party Crane were not found by either of the tribunals below.

In this court three main questions are urged in appellant's assignments of errors:

First. That error was committed in permitting the change of application from a joint one to one in which Grier was the sole inventor, it being contended by appellant that the junior parties should be barred from such amendment on account of laches in discovering and presenting the motion.

Second. That the junior parties' application does not support the counts at issue.

Third. That in event it is held that the junior parties can make the counts and are prior in conception, there was a lack of diligence from just prior to the time Crane entered the field until the date of the junior parties' reduction to practice.

The subject-matter involved in the interference relates to refrigerating apparatus and more particularly to a motor-compressor unit for use in refrigerating apparatus which is hermetically sealed from the outside atmosphere.

The first question to be considered is the propriety of permitting the substitution of the application of the sole inventor for that of the joint inventors.

It is urged by appellant that appellees made no sufficient showing of lack of negligence at the time of preparing the original preliminary statement, in discovering the true facts which were afterwards set out in the affidavit. Appellant states that it is well settled that such a substitution is only permitted where the showing is clear that there was no negligence in discovering the true facts. Appellant urges that there is no showing in the record why the mistake as to the real inventor was not discovered until the taking of the testimony, and that the affidavit of Grier, filed in support of the motion, shows conclusively that the alleged evidence which made the substitution desirable was in Grier's possession at all times, and that it was later found when diligent search was made for it.

We have examined with some care the facts set out in the affidavit by Grier relied upon as a basis for the motion of substitution. It states, among other things, that, at the time of the filing of the preliminary statement of Grier and Warren, diligent search was made to establish all the facts necessary for the drafting of the preliminary statement; that every source was investigated and that every place was searched where there was reason to believe that facts required for the preliminary statement might be found and that search was made with due diligence and care; that shortly before the taking of the testimony in chief by Grier and Warren, the attorneys of record informed the said Grier that he would be questioned not only regarding his activities from the date of conception of the invention, but also as to his experience and activities in general prior thereto with respect to refrigeration; that Grier then, in an effort to obtain evidence showing his previous experiences in connection with refrigeration, began searching in a portion of a trunk at his home, which trunk contained papers relating to a certain refrigerator which he had previously developed and sold under the trade-name "Zima"; that there was no reason to believe that any of this matter concerning the Zima refrigerator had any connection with the refrigerator involved in the interference since the Zima refrigerator was quite different in character; that while searching in this trunk he found and for the first time recollected the sketch now marked "Grier and Warren Exhibit A" which discloses the subject-matter of the involved counts and that the finding of the sketch was accidental, and that it was located in a place where it was not reasonable to expect it would be found.

Warren swears that he believes that Grier is the sole inventor, and that the joint application was filed through inadvertence. Grier swears that he is the sole inventor of the subject-matter involved, and that his filing of the joint application was without any fraudulent intent and occurred through inadvertence. The record shows that at the time when the original drawing was introduced into the testimony in chief of Grier and Warren, no testimony for Crane had been taken.

In view of the above-stated showing, it seems clear that the application of Grier, and not the joint application of Grier and Warren, was the proper one to consider in the interference, and we conclude that the Examiner of Interferences and the Board of Appeals, in affirming the action of the Examiner of Interferences, committed no error in permitting the substitution complained of.

Appellant has stressed with great earnestness, and discussed at great length, his contention that the junior parties cannot make the counts in issue, and bases his contention chiefly upon the ground that each of the counts contains limitations which will now be pointed out: Count 1 requires that the main frame comprises the support for the unit which consists of the motor and compressor. Count 2 calls for a main supporting frame. Count 3 contains the phrase "a main frame comprising a support for both a prime mover and a compressor etc.." Count 4 calls for a motor mounted on one side of the main frame member and the compressor on the other, and count 5 calls for a main supporting...