Euth v. Oliver, Patent Appeal No. 3242.

• Decision Date: 16 April 1934
• Docket Number: Patent Appeal No. 3242.
• Citation: 70 F.2d 110
• Parties: EUTH v. OLIVER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

70 F.2d 110 (1934)

EUTH v. OLIVER.^*

Patent Appeal No. 3242.

Court of Customs and Patent Appeals.

April 16, 1934.

Dyrenforth, Lee, Chritton & Wiles, of Chicago, Ill. (John H. Lee, Horace Dawson, and Bernard A. Schroeder, all of Chicago, Ill., of counsel), for appellant.

L. G. Miller, of Boston, Mass. (Emery, Booth, Varney & Townsend, of Boston, Mass., of counsel), for appellee.

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

GRAHAM, Presiding Judge.

An interference proceeding was instituted in the United States Patent Office between the application for a patent of the appellant, John E. Euth, filed February 6, 1930, and the pending application of the appellee, Walter E. Oliver, filed January 29, 1929, for a similar invention. The subject-matter of the interference was set out in five counts, which are as follows:

"1. In a mechanism for feeding perforated strips of material, a divided finger adapted to enter holes in the strips, and means to cause it to expand therein substantially in the line of feed, to position the material.

"2. Mechanism for feeding strip material having holes at intervals therealong, comprising in combination with means for feeding the strip a distance approximately equal to the distance between successive holes, a gaging device operated to enter a hole substantially at the completion of such feeding movement, and auxiliary feeding means for positioning the strip by means of said gage.

"3. Mechanism for feeding strip material having holes at intervals therealong comprising, in combination with means for feeding the strip a distance approximately equal to the distance between successive holes, a gaging device operated to enter a hole substantially at the completion of such feeding movement, and auxiliary feeding means having a definite limit of travel past the position of such gage for positioning the strip thereagainst.

"4. An alignment device for a series of apertured webs, consisting of a pin composed of elements adapted for movement toward and away from one another within the apertures of the webs, and means for causing said movement.

"5. An alignment for a series of webs having apertures therein, consisting of an expandable pin, adapted, when in contracted condition, to occupy the apertures of the webs, and when moved to expanded condition to cause said occupied apertures to become aligned, and means to expand and contract the pin."

Preliminary statements were filed by both parties, and, after the taking of testimony, the Examiner of Interferences rendered a decision awarding priority of the invention to the appellee, Oliver. An appeal was duly perfected to the Board of Appeals, and, having been submitted there, the decision of said Examiner of Interferences was affirmed. From that decision the appellant has appealed to this court.

The counts of the interference are claims 8, 12, 13, 16, and 17 of the Oliver application, which were copied and appear as claims 13, 14, 15, 1, and 2 of the Euth application.

The subject-matter of the interference concerns what are ordinarily known as autographic registers, and particularly involves split-pin alignment devices such as are usually employed to secure correct alignment of two or more printed webs or sheets, and devices for feeding and tensioning said printed webs or sheets while in use in said machines. The disclosures of the two parties are substantially the same, and no question is raised as to the counts of the interference reading equally upon both disclosures.

The Examiner of Interferences held that the party Euth was the first to conceive as to all the counts of the interference. This finding is concurred in by the Board of Appeals; the date given to Euth for such conception being, broadly, the summer of 1927. The Examiner of Interferences also held that Euth had reduced to practice as to counts 4 and 5 of the interference at the same time. These counts are the ones involving the split-pin aligning device. The Examiner of Interferences was not convinced that the subject-matter of counts 1, 2, and 3 was successfully reduced to practice in the summer of 1927.

He further found that the party Euth had filed in the Patent Office, on November 25, 1927, an application for a patent, which application disclosed a web aligning device substantially as is involved in his application here in interference; that this application was allowed to become abandoned in September, 1928; that in May, 1928, the appellee, Oliver, conceived and reduced the invention here in issue to practice, filed an application in January, 1929, and started the commercial sale of his invention in April, 1929; that thereafter, on February 6, 1930, Euth filed the application here in interference.

The Examiner of Interferences also found, on the record, that Euth had abandoned that part of his invention reduced to practice in June, 1927, and that, as to the subject-matter of counts 1, 2, and 3, he was not diligent in reducing the same to practice during the period from January 29, 1929, the date of Oliver's pending application, and February 6, 1930, the date of Euth's application here in interference.

The Board of Appeals, while concurring in the conclusion reached by the Examiner of Interferences, did not entirely concur with his reasons. The Board was of opinion that Euth had not shown a reduction to practice of any of the counts of the interference in 1927. Being of the opinion that there had been no such reduction to practice, the Board held that the burden was upon Euth to establish diligence from just before the entrance of Oliver in the field, May 17, 1928, until Euth filed the application here involved, on February 6, 1930. This conclusion rested in part on the ancillary holding that Euth's former application of November 25, 1927, had been abandoned on September 23, 1928. The Board was of opinion, after considering the record, that, while Euth was first to conceive as to all counts, he had not been diligent over the period heretofore mentioned, and hence priority as to all counts was awarded to Oliver.

The appellant, Euth, is an experimental engineer, and is the assignor to the Globe Register Company, of Cincinnati, Ohio, which was taken over by the United Autographic Register Company, of Chicago, in the summer of 1928. His original application, No. 235572, of November 25, 1927, was filed prior to this consolidation.

Euth testified that he conceived the invention in the latter part of 1925, and that at that time, or shortly afterwards, he disclosed the same to the foreman of his department, and later to the superintendent of the plant, Mr. Konerman, that he was authorized to construct a small hand-pull machine, and that he thereafter did so. It appears from his testimony that the machine was not preserved, and there is nothing by which its make-up may be disclosed except a small sketch drawn by Euth since that time, from his recollection of what the machine was. At best this machine was experimental, was not intended for use, and is not claimed by Euth to have been a reduction to practice.

Two other machines were constructed by or under the direction of Euth thereafter — one known as Exhibit 3, having been built in the early part of the summer of 1927, and a later machine, known as Exhibit 10, having been completed about the latter part of July, 1927. This last-named machine was built for exhibition at a so-called round-up of the Globe Register Company officials and salesmen, which was had in August, 1927.

This machine, Exhibit No. 10, is satisfactorily shown to have been exhibited at said round-up. Most of the controversy in this case centers about the question as to whether this machine constituted a reduction to practice of the subject matter of the counts at issue. When the testimony in chief for appellant was taken, this machine was not available; it being claimed that the same was lost. Later, a further search disclosed the whereabouts of the machine, and it was produced, and, after the Commissioner of Patents had permitted the introduction of further testimony on this point, it was shown that the exhibit had been in the storeroom of the assignee of appellant since its original exhibition at the said round-up. The machine is before us, and is claimed to be capable of operation and to produce satisfactory results; thus demonstrating, as it is claimed, a complete reduction to practice of the subject-matter of all the counts in August, 1927. There seems to be little doubt that the split-pin element was incorporated in this device, and that it worked with reasonable accuracy.

The record shows that this machine has not been altered. No contention is made that the alignment, expandable pin device did not operate and a demonstration before the court of said Exhibit 10 plainly discloses that this portion of the register is completely operative.

We find ourselves in agreement, therefore, with the Examiner of Interferences, in his conclusion that Euth reduced to practice the subject-matter of counts 4 and 5 prior to August, 1927.

It is argued by appellee that the device of Euth was never advanced to the point where it could have been used in a commercial way. Applying ourselves to the subject-matter of said counts 4 and 5, it was not necessary that there be a commercial production of the device to constitute a reduction to practice. Wietzel v. Lacy, 39 F.(2d) 672, 17 C. C. P. A. 943; St. John et al. v. Schulze, 47 F.(2d) 798, 18 C. C. P. A. 1050.

The Board of Appeals makes the following suggestion: "* * * We find no reason to make any distinction between counts 4 and 5 and counts 1, 2 and 3 in this respect. The separable pins represented by counts 4 and 5 do not appear to have been conceived as having any use separately from some machine combination of this or similar type."

This, it seems to the court, is not a sufficient reason for failing to award priority to Euth upon counts 4 and 5, if, in fact,...