Driggs v. Clark, Patent Appeal No. 4808.

• Decision Date: 04 January 1944
• Docket Number: Patent Appeal No. 4808.
• Parties: DRIGGS et al. v. CLARK.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

31 CCPA 856, 140 F.2d 994 (1944)

DRIGGS et al. v. CLARK.

Patent Appeal No. 4808.

Court of Customs and Patent Appeals.

January 4, 1944.

Robert H. Wendt, of Chicago, Ill. (Albert G. McCaleb and J. David Dickinson, both of Chicago, Ill., of counsel), for appellant.

Clarence J. Loftus, of Chicago, Ill. (Loftus, Moore, Olson & Trexler, of Chicago, Ill., of counsel), for appellee.

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

GARRETT, Presiding Judge.

This is an appeal by Driggs et al. (joint inventors) from the decision of the Board of Appeals of the United States Patent Office affirming the award of priority to the party Clark by the Examiner of Interferences in an interference declared by the Primary Examiner June 7, 1939.

A third party (joint inventors) was originally involved but was eliminated by judgment on the record.

The interference is between the application, serial No. 140,778, of Driggs et al. (assigned to the Fansteel Metallurgical Corporation of Chicago, Illinois, employer of Driggs et al.) filed May 5, 1937, and the application, serial No. 168,899, of Clark (assigned to the Magnavox Company of Fort Wayne, Indiana), filed October 14, 1937.

As the junior party the burden rested upon Clark to establish his case by a preponderance of the evidence, and testimony was taken in his behalf. Testimony was also taken on behalf of Driggs et al., but as the case is presented before us reliance is placed solely on the filing date of the application — May 5, 1937.

The subject matter relates to electrolytic condensers, particularly to alleged improvement in the structure of a film-forming electrode on an anode. Two counts are involved which read:

"1. A porus electrolytic condenser element made up of a rigid self-supporting homogeneous sintered body of discrete valve metal particles bonded together.

"2. A porous electrode for electrolytic condensers, comprising a self-supporting porous mass of finely divided particles of tantalum permanently conductively attached to each other at spaced points on their surface."

While, as stated above, the board affirmed the award of priority to Clark by the Examiner of Interferences, it disagreed as to certain of the latter's findings.

The Examiner of Interferences awarded Clark a conception date of "at least as early as December 14, 1936," but awarded him no date for actual reduction to practice, and found absence of proof of diligence on the part of Clark, finally saying, "* * * in so far as the priority proofs are concerned, the party Clark has failed to establish that he was the prior inventor." He held, however, that Driggs et al. derived the invention from Clark. So, in fact, his decision in the final analysis, turned solely upon the question of originality.

The board disagreed with the holding of the Examiner of Interferences respecting Clark's conception date (December 14, 1936), but awarded him a conception date of December 17, 1936. It also disagreed with the holding of the Examiner of Interferences to the effect that Clark had not reduced the invention to practice prior to the filing date of the application of Driggs et al., and held that Clark reduced the invention to practice December 22, 1936, saying:

"It appears to us that Clark has proved his priority case by a preponderance of the evidence especially where Driggs et al. made no attempt whatever to establish priority of conception or a prior actual reduction to practice."

So, it appears that the decision of the board awarding priority to Clark is based primarily upon its finding of Clark's prior conception and reduction to practice. However, it went further and, in effect, approved the finding of the Examiner of Interferences on the question of originality, saying:

"We are also satisfied that Driggs et al. obtained their information as to the broad counts in issue from Clark. It is clear from the Driggs record that whatever they may have invented over Clark was not completed until May, 1937."

It will be observed that the date awarded Clark by the board for conception (December 17, 1936) is only three days later than that (December 14, 1936) awarded him by the Examiner of Interferences (the respective awards being made upon the basis of different exhibits), and that the date awarded him for reduction to practice (December 22, 1936) is only five days later than that awarded him (by the board) for conception.

Particular attention has been called to the foregoing dates because of the question of originality upon which the tribunals of the Patent Office agreed, although they differed as to Clark's conception date.

It seems to us that upon the question of originality the precise date of Clark's conception is of primary importance. We say this because it is obvious from the record that whatever disclosure may have been made by Clark from which Driggs et al. may have derived the invention were made on either December 15, 1936, or December 16, 1936, on one or the other of which dates Clark personally went to the Fansteel Metallurgical Corporation to procure a slug of porous tantalum. He there contacted Mr. Frederick L. Hunter, chief engineer of the tantalum division of the Fansteel Metallurgical Corporation. It is alleged (and the Examiner of Interferences held) that Clark then disclosed to Hunter his conception of the invention and that Driggs et al. received knowledge of such conception from Hunter. No other date of such disclosure by Clark to officials or employees of the Fansteel Company is alleged, claimed, or shown in the record.

Obviously, if the board's holding meant that Clark did not conceive the invention earlier than December 17, 1936, and was correct, Clark could not have made disclosure of it to Hunter on December 15, or December 16, 1936, and there would seem to be no basis in the record for the board's conclusion on the question of originality, notwithstanding the fact that Driggs et al. in their brief before us concede that the board's finding of conception by Clark on December 17, 1936, "is not a contested question."

It is contended, in substance, on behalf of Driggs et al. that the board correctly overruled the holding of the Examiner of Interferences accrediting Clark with a conception date as of December 14, 1936. The Driggs et al. brief (page references omitted) states:

"The party Clark established as of December 14, 1936 his authorship of a notebook page * * *, which he contends evidences a conception of the invention. The Examiner of Interferences held it satisfied the counts * * *; the Board of Appeals held it did not * * *. This is a question in issue."

While Clark did not appeal from the board's decision awarding him December 17, 1936, as the earliest date for conception, it is the well settled practice that he, as appellee, is entitled to have us consider the date awarded him by the Examiner of Interferences, and we have accordingly examined the proofs upon which the finding of the Examiner of Interferences in that regard was based.

It was based primarily upon a description written by Clark in longhand in his notebook, and dated December 13, 1936, the same being witnessed by J. K. Nieh and Ralph W. Clark, under date of December 14, 1936. A photostatic copy is embraced in the record as Clark's Exhibit 1. It appears that Ralph W. Clark, who was an employee of the Magnavox Company, is not related to appellee. He was called as a witness and testified that he signed the document on December 14th. Nieh appears to have been in a foreign country at the time this testimony was taken and his testimony could not be obtained. It is conceded in the brief for Driggs et al. before us that Clark established authorship of the notebook page, as of December 14, 1936, and its authenticity is not in question, the only question raised concerning it being that it does not satisfy the counts, and hence does not evidence conception.

The notation reads in full:

"New Ideas.

"Dec. 13, 1936 Conceived idea of compressing filming metal powders to form a porous anode for electrolytic condenser to obtain a high...