Hess v. Dreyfuss

• Decision Date: 26 June 1939
• Docket Number: Patent Appeal No. 4119.
• Citation: 104 F.2d 801
• Parties: HESS v. DREYFUSS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

104 F.2d 801 (1939)

HESS v. DREYFUSS.

Patent Appeal No. 4119.

Court of Customs and Patent Appeals.

June 26, 1939.

Chritton, Wiles, Davies, Hirschl & Dawson, of Chicago, Ill. (George A. Chritton and Stanley Hoods, both of Chicago, Ill., and Nelson J. Jewett, of Washington, D. C., of counsel), for appellant.

George H. Kennedy, Jr., of Worcester, Mass. (Charles E. Riordon, of Washington, D. C., and Owen W. Kennedy, of Worcester, Mass., of counsel), for appellee.

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

HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority of invention to appellee, Henry Dreyfuss.

The invention in issue is a design for a handle for use on various articles, including kitchen and household tools and utensils.

The handle is described in appellee's application as follows: "As shown in the drawings, the handle consists of an elongated body of convex form throughout, with the ends of the body tapering at different angles and terminating in rounded surfaces of different curvature."

That description of the invention was accepted as correct by each of the tribunals of the Patent Office, as well as by counsel for the parties.

The count in the interference reads: "The ornamental design for a handle as shown and described."

The interference is between appellant's application, serial No. D-56,678, filed May 4, 1935, and appellee's application, serial No. D-55,632, filed February 27, 1935.

Appellant is the junior party, and the burden was upon him to establish priority of invention by a preponderance of the evidence.

In his preliminary statement, appellant alleged that he conceived the invention in February 1934; that his first drawing of it was made on October 16, 1934; that he first disclosed it to others in November 1934; that in November 1934 he began exercising reasonable diligence in reducing the invention to practice; that in January 1935 he "first embodied his invention in a full sized operative device"; and that on March 25, 1935, he first prepared a written description of the invention.

Appellee alleged in his preliminary statement that he conceived the invention on or about August 1, 1934; that he made the first drawing of the invention and disclosed the invention to others on or about August 15, 1934; and that he reduced it to practice on or about September 1, 1934.

Counsel for appellant contended before each of the tribunals of the Patent Office, and contend here, that the involved design is not patentable, and that appellee failed to establish that he and not some other person in his organization conceived the alleged invention.

Evidence was introduced by appellant for the purpose of establishing that the design here involved was not patentable over prior art, and also for the purpose of establishing that he reduced the invention to practice and disclosed it to others long prior to the dates alleged in his preliminary statement.

It appears from the decisions of the tribunals of the Patent Office that counsel for appellee moved to strike from the record (the motion is not in the record and, therefore, is not before us) the evidence introduced by appellant relative to the patentability of the involved design, as well as that introduced by appellant for the purpose of showing disclosure to others and reduction to practice prior to the dates alleged in appellant's preliminary statement. It further appears from the decision of the Examiner of Interferences, dated April 1, 1937, that appellee's motion was sustained only so far as it related to the evidence pertaining to the patentability of the involved design. It further appears that the tribunals of the Patent Office considered all other evidence introduced by appellant, the Examiner of Interferences stating in his decision that, regardless of what appellant's evidence established, he would be restricted to the dates alleged in his preliminary statement.

It is well settled that "a party is restricted to the dates alleged in his preliminary statement for conception (which ordinarily involves proof of disclosure to others) and reduction to practice of an invention," and that proof of any date earlier than those alleged in his preliminary statement is competent only for the purpose of establishing "the date alleged and none other." See rule 110 of the Rules of Practice of the United States Patent Office, also Fenton R. Brydle v. Harry H. Honigbaum, 54 F.2d 147, 19 C.C.P.A., Patents, 773; Borm v. Champayne, decided April 10, 1939, 26 C.C.P.A., Patents, ___, 102 F.2d 862.

Counsel for appellant state in their brief that during the motion period appellant moved to dissolve the interference on the ground "of non-patentability of the Dreyfuss claim," and contend that the Examiner of Interferences and the Board of Appeals erred in not considering evidence introduced by appellant (which, it is stated, was not before the Primary Examiner) for the purpose of establishing the nonpatentability of the subject matter of that...