Fredkin v. Irasek

• Citation: 397 F.2d 342,158 USPQ 280
• Decision Date: 09 December 1968
• Docket Number: Patent Appeal No. 7986.
• Parties: Edward FREDKIN, Appellant, v. Eugene H. IRASEK, Appellee.
• Court: United States Court of Customs and Patent Appeals

158 USPQ 280, 397 F.2d 342 (1968)

Edward FREDKIN, Appellant, v. Eugene H. IRASEK, Appellee.

Patent Appeal No. 7986.

United States Court of Customs and Patent Appeals.

June 27, 1968.

Certiorari Denied December 9, 1968.

Rines & Rines, Robert H. Rines, David Rines, Boston, Mass., Nelson H. Shapiro, Washington, D. C., for appellant.

Louis A. Kline, Dayton, Ohio, (John T. Matlago, Hawthorne, Cal., William T. Estabrook, Kemon, Palmer, Stewart & Estabrook, Washington, D. C., of counsel) for appellee.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK,^* Judges.

Certiorari Denied December 9, 1968. See 89 S.Ct. 450.

WORLEY, Chief Judge.

Fredkin appeals from the decision of the Board of Patent Interferences awarding Irasek priority of invention in an interference between Fredkin patent No. 3,105,593¹ and an Irasek application.² Fredkin, as the junior party, has the burden of proving his case by a preponderance of the evidence.

The interference involves five counts corresponding to claims 1-5 of the Fredkin patent. The issues include whether the board erred in holding that the evidence Fredkin relies on to prove conception as to all the counts, and reduction to practice as to counts 1, 2 and 5, prior to the Irasek filing date was inadequate.³ Also in dispute is whether the board erred in holding that Fredkin was precluded from questioning the support in the Irasek application for certain recitations in counts 3 and 4.

The invention relates to apparatus for removing a selected information storage card from a stack of such cards, automatically guiding the selected card past information sensing means, and thereafter returning it to the stack. Counts 1, 3 and 4 read:

1. Selector apparatus having in combination, a stack of cards containing information at a predetermined position thereon, said cards having at predetermined regions thereof card-coding elements, said elements defining different patterns for the respective cards, a plurality of card-holding members adjacent corresponding coding elements and having means for releasably coupling the holding members to coding elements of said cards, code-selective operating means for preventing the coupling of coding elements of a selected card with corresponding holding members, whereby the selected card may be separated from said stack, means for automatically guiding the selected card apart from said stack along a predetermined path and thereafter returning the selected card to said stack, and information-sensing means disposed along said path in alignment with said predetermined card position for scanning the information contained on the selected card as the selected card follows said predetermined path.

3. The apparatus of count 1, said information being arranged in a plurality of parallel tracks on said cards, said sensing means having plural scanning elements aligned with corresponding tracks as the selected card is moved along said path past said scanning elements.

4. The apparatus of count 1, said coupling means being magnetic.

Counts 2, and 5, like 3 and 4, are dependent on count 1. Count 2 describes the card-coding elements as "comprising" notches in the upper edge of the cards. Count 5 specifies that the information is stored magnetically, and that the sensing means is a magnetically sensitive pick-up.

For a fuller understanding of the invention, reference is made to Fig. 2 of the Fredkin patent:

Fig. 2 shows the invention applied to four cards, designated I-I, I-II, II-II and II-I, by way of illustration, although a larger number of cards is contemplated. The upper edge of each card has four slots, each of which is either straight sided as at A or has notched sides providing a narrowed opening as at B. The cards are normally supported in stacked vertical position on horizontal holding members which are disposed in the slots. The holders are inverted V-shaped longitudinal members hinged along their centers so that normally only the straight-sided slots in the cards are free from movement relative thereto, while the notches in the other slots restrain the cards from dropping out of the stack. Operating buttons 1", 2", 1"' and 2"' selectively operate pinchers 20 which compress the holders about their hinges to reduce the width of selected holders to permit slots with notched sides to move downwardly therefrom. The notches are arranged in a different combination on each card in accordance with a binary code or the like. Thus, actuation of different combinations of buttons permits different cards to drop from the holders. In Fig. 2, card I-I has been selected and is shown being moved horizontally to the right on a belt 5 past a plurality of vertically-spaced magnetic detectors 29' which serve to detect information on a plurality of correspondingly disposed recording strips on the card. Belt 5 continues to move the card until it reaches dotted line position I'-I'. From there the card is moved by belts 7 having lugs 7' to a vertical position as shown at I"-I". A belt 9 then carries the card to the left where it rest against a support 11'. The left edge of the card is pressed against a bar 21 to close electrical contacts 19 and thereby energize a solenoid 13 momentarily. The solenoid then acts through the armature 15 to move the surface 11' forward to a solid line position 11 to pass the slots over the free ends of the corresponding holders to restore the card to the stack.

In an alternate arrangement, Fredkin omits the coded slots earlier described. Instead, he provides a coded arrangement of what he describes as permanent magnets at the top of each card. Electrically magnetizable bars, which are provided to cooperate with the magnets to hold the cards, may be selectively deenergized for the purpose of releasing cards selected according to the code.

In his brief, Fredkin states that the issues as to counts 3 and 4, which relate to support in the Irasek application, "are the most clear cut" and discusses them first. We will do the same.

It appears that, during the motion period, Fredkin moved to dissolve the interference as to count 3 on the ground that:

Count 3 specifies "a plurality of parallel tracks on said cards" and "plural scanning elements aligned with corresponding tracks", which structure has not been disclosed, described, illustrated, or claimed in the original Irasek application, Serial No. 12,032, in interference; wherefore the party Irasek has no right to make the said Count 3, the said Count is unpatentable to Irasek, and there is, accordingly, no interference in fact with regard thereto, so that the interference should be dissolved as to Count 3.

The examiner denied that motion, finding that the Irasek application discloses a plurality of write (recording) heads and a plurality of read (reproducing) heads, with the path of movement of his cards as the cards pass the heads being such as to clearly teach the use of parallel recording paths or tracks.

Before the board Fredkin asserted that count 3 should be interpreted as requiring simultaneous extraction of information from the plural tracks, and that Irasek does not disclose that feature. The board agreed with the examiner as to the matter raised in the motion to dissolve. However, it declined to consider whether the count requires simultaneous extraction of information from the plural tracks, stating:

* * * Since these arguments were not raised by motion to dissolve under Rule 232(a), they are not proper for our consideration now. Franklin v. Hopper, 312 F.2d 949, 50 CCPA 931 * * *.

The cited case of Franklin v. Hopper involved an interpretation of Rule 258⁴ of the Rules of Practice of the Patent Office. There a party was held not entitled to question before the board certain aspects of his opponent's support for a count where he had neither raised the question by motion nor shown good reason for his failure to do so.

Before us, Fredkin again argues that count 3 requires simultaneous extraction of stored information from a plurality of tracks, and that the Irasek application does not disclose that feature. He also argues that Irasek himself conceded in his testimony that there is no such disclosure in his application. Fredkin avoids the question of whether he raised the matter of simultaneous scanning in his motion, electing to assert that he "did raise the very issue that this requirement in count 3 of the `plural scanning elements * * * has not been disclosed.'"

Irasek argues that his application "contemplates not only `plural scanning' of a plurality of channels, but also selective plural or singular scanning by any one head, all of the heads or any combination of the heads." He also questions whether the terminology of count 3 requires "simultaneous plural scanning."

Quite apart from those contentions, whether Irasek discloses plural scanning elements is a different question from whether he discloses, or count 3 requires, that plural scanning elements be read simultaneously, as the board recognized.

For the reasons given by the board, we are satisfied that it did not err in its treatment of Fredkin's contentions that Irasek lacks support for count 3. Strashun v. Dorsey, 345 F.2d 201, 52 CCPA 1726 (1965); Franklin v. Hopper, supra; Anderson v. Walch, 152 F.2d 975, 33 CCPA 774 (1956). Moreover, the charge that Irasek conceded that his application does not disclose simultaneous plural scanning is based on certain questions answered by Irasek on cross-examination, and careful scrutiny of the questions and answers relied on reveals no such concession. Although Irasek and another of his witnesses did state that certain test operations did not include simultaneous reading of plural tracks, such statements obviously are not concessions as to the content of the application disclosure.

Fredkin also argues that Irasek has no support in his application for the limitation of "said coupling means being magnetic" in count 4. The board, pointing out that no motion to dissolve...