Johnson v. Riener

• Decision Date: 18 May 1962
• Docket Number: Patent Appeal No. 6793.
• Citation: 49 CCPA 1096,302 F.2d 757
• Parties: Alpha J. JOHNSON and John A. Moore, Appellants, v. Harry RIENER, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

49 CCPA 1096, 302 F.2d 757 (1962)

Alpha J. JOHNSON and John A. Moore, Appellants, v. Harry RIENER, Appellee.

Patent Appeal No. 6793.

United States Court of Customs and Patent Appeals.

May 18, 1962.

Edward B. Beale, George R. Jones, Beale & Jones, Washington, D. C. (James E. Toomey, Oakland, Cal., and John S. Rhoades, San Diego, Cal., of counsel), for appellants.

Robertson & Youtie, and Robert K. Youtie, Philadelphia, Pa., for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

MARTIN, Judge.

This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention of the subject matter of Interference No. 89,107 to the junior party Riener, appellee here.

The single count of the interference corresponds to the sole claim of appellee's patent No. 2,802,411, issued August 13, 1957 on an application filed on February 5, 1952. Appellants are involved in the proceeding on the basis of their application Serial No. 339,222, filed on February 27, 1953. They became senior party as the result of the Primary Examiner granting their motion to shift the burden of proof upon finding them entitled to the benefit of the filing date of their co-pending application, Serial No. 197,276, filed on November 24, 1950. At the same time he granted the motion to shift the burden of proof, the examiner denied a motion by appellee to dissolve the interference on the ground that appellants cannot make the count in their involved application.

Appellee, being restricted by reason of his preliminary statement to a date subsequent to the filing date of appellants' earlier application, took no priority testimony, and the board's consideration of the case was limited to the matter of support for the count in appellants' applications. The award of priority to appellee was based on the board's finding that neither of appellants' applications discloses structure which supports the count.

As before the board, the sole issue here is whether these applications support the count.

The subject matter of the interference is a metal pie plate formed of very thin material, defined in the single count as follows:

"1. In a thin metallic pie plate having a thickness in the nature of four one-thousandths of an inch, a circular, central, depressed main body portion, an outwardly flared conical wall integrally joined to said main body portion, said conical wall being formed with a series of spaced apart radially extending upraised ribs, and an annular rim integrally joined to the upper, outer edge of said conical wall, said ribs in the said conical wall being continued over into said rim and terminating just beyond the inner edge of said rim leaving a flat annular track for accommodating a pie rimmer."

Although appellants obviously disclose some of the elements of the count, appellee contends appellants' applications fail to meet three of the limitations and that, therefore, appellants cannot make the count. These limitations are (1) the recitation of a series of spaced apart radially extending upraised ribs, (2) the statement that the ribs terminate just beyond the inner edge of the rim, and (3) the reference to a flat annular track for accommodating a pie rimmer. Since appellee's filing date is prior to the filing date of appellants' later application involved directly in the interference, appellants can prevail only if features meeting all the limitations are found in both of their applications.

Although the count must be given the broadest interpretation it will reasonably support, appellants, who have copied this count from an issued patent, have the burden of showing their applications disclose clearly the features in controversy. Bierly v. Happoldt, 201 F.2d 955, 40 CCPA 774; Brand v. Thomas, 96 F.2d 301, 25 CCPA 1053. It is also well established that any doubt which may arise about such disclosure must be resolved against appellants who copied the claim.

Coming first to the limitation of a series of spaced apart radially extending upraised ribs, even though the board found adversely to appellee concerning this matter and appellee did not cross appeal, we believe this matter should be considered by us without such cross appeal having been filed since it was adjudicated by the board in connection with the question of appellants' right to the benefit of the filing date of the parent application. Klemperer v. Price, 271 F.2d 743, 47 CCPA 729.

The parent application does disclose a structure which contains a series of ribs of a sort, i. e., if one can call the results of the metal crimping process used by appellants, ribs. However, the question of whether these ribs are "spaced apart" as required by the count is a different matter. The specification does not call them such a structure nor does the drawing show such a structure. The results of crimping metal are just what one would expect — irregular elevations and depressions falling into more or less of a pattern. Certainly these elevations or ribs are not spaced apart in any sense of that phrase. As a matter of fact, the "ribs" as shown by the drawing are as close to one another as possible if the identity of the ribs is to be maintained. Just "ribs" or "adjacent ribs" would describe appellants' "ribs." "Spaced apart" requires more than appellants show. According to Webster's Third New International Dictionary, 1961, "space" means "to place at intervals" and "to arrange with spaces between"; "apart" is defined as "separately in space or time." In our opinion, neither the specification nor drawing of appellants' parent application shows a structure which fits those definitions.

With reference to the next feature of the count, that the ribs terminate just beyond the inner edge of the rim, we find that neither of appellants' applications discloses the recited structure. The specification of the later application precludes such a structure in stating:

"The formation of a full-rolled bead in the rim 2 of the utensil is difficult in view of the presence of the corrugations therein as shown in Figure 4 which, if rolled or curled by existing methods, will fracture or split. The method employed in this invention consists in progressively smoothing the outer marginal edge of the rim portion 2 as is shown in Figure 5. Thereafter, the smooth edge may be progressively curled to form a full-rolled reinforcing bead. The beginning of this edge rolling operation is shown in Figure 6 and the rolling is continued until a full-rolled bead is formed. The finished bead, therefore, consists of a closely wound

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