Kahn v. Phipard

• Decision Date: 27 June 1968
• Docket Number: Patent Appeal No. 7979.
• Citation: 158 USPQ 269,397 F.2d 995
• Parties: Simon S. KAHN, Appellant, v. Harvey F. PHIPARD, Jr., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

158 USPQ 269, 397 F.2d 995 (1968)

Simon S. KAHN, Appellant, v. Harvey F. PHIPARD, Jr., Appellee.

Patent Appeal No. 7979.

United States Court of Customs and Patent Appeals.

June 27, 1968.

Curtis F. Prangley, David A. Vogel, Douglas O. Baird, Prangley, Baird, Clayton, Miller & Vogel, Chicago, Ill. (John B. Armentrout, Washington, D.C., of counsel), for appellant.

Richard R. Trexler, Olson, Trexler, Wolters & Bushnell, Chicago, Ill. (Elmer Buckhorn, Buckhorn, Blore, Klarquist & Sparkman, Portland, Ore., Charles L. Sturtevant, Washington, D.C., of counsel), for appellee.

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

SMITH, Judge.

The Board of Patent Interferences¹ awarded priority of invention to Phipard in Interference No. 93,370² and Kahn appeals. No testimony was taken by either party. The board awarded priority to Phipard as the senior party in view of his effective 1960 filing date.

While several issues are raised on this appeal, the determinative issue is whether Phipard was properly given the benefit of his filing date. An ancillary issue is also raised by Kahn who contends the award of priority is void because it was made by a board which was illegally constituted by reason of its including an acting examiner of interferences. Other issues which were raised by Kahn but which we do not regard as providing a basis for reversal are, broadly stated, that Phipard is estopped to contest priority, that it was improper to fail to set a new motion period after the present counts were substituted in the interference,³ and that it was error for the examiner to shift the burden of proof.

The invention in issue relates to a self-tapping screw with swaging protuberances on its work-entering end to facilitate the formation of a thread on the work piece. Count 3 of the interference is drawn to the article and count 4 to a process for making that article. The counts are so similar, insofar as the determinative issue is concerned, that we need consider only count 3 in detail.

An understanding of the invention adequate for present purposes can be gleaned from Figs. 1-3 which appear in the drawings of both Phipard applications,⁴ when considered with count 3 which is here reproduced with the addition of bracketed numerical references referring to the parts shown in these figures.

Count 3 reads:

3. A self-tapping fastener screw 15 including:

(a) a shank portion 17 having an enlarged upset head 16 at one end and a tapered work-entering portion 19 terminating in a tip at the other end,

(b) said shank 17 and work-entering portions 19 being provided with a continuous helical rolled thread formation 20 throughout substantially the full length thereof,

(c) the pitch diameter cross sections of said rolled helical thread formation being of circular shape throughout the full length of said shank 17 and said work-entering end portions 19,

(d) a plurality of circumferentially spaced apart discrete thread forming protuberances 21 expressed from the flanks of the helical thread formation on said working-entering end portion 19 and throughout substantially the full length thereof (e) each of said protuberances 21 in cross section taken in the plane of intersecting said protuberance at the point of greatest offset of said protuberance from the helix of the thread and in a direction at right angles to the thread having a cross sectional boundary line along at least one side thereof extending substantially parallel with and substantially uniformly offset from the flank of the thread immediately forward thereof in the direction toward the tip of said work-entering end portion 19

(f) the surface of the protuberance 21 on at least the forward side thereof in the direction toward said tip sloping smoothly and gradually from the flank of said thread to said boundary line,

(g) the crests of said protuberances 21 from said tip to said shank 17 increasing in distance progressively radially outwardly from the screw axis and the crest of the protuberance next adjacent the shank portion 17 being substantially the same distance radially outwardly from said axis as the crest of the thread on said shank portion and also substantially the same cross-sectional shape and dimensions.

The applications describe the function of the protuberances 21 as swaging the internal threads in the pilot hole in the work. This is in contrast to known self-tapping screws without such protuberances and in which substantially the full length of the thread performs that function. An advantage inherent in the present structure is a significant reduction of the contact friction during thread cutting.

The interference was originally declared January 30, 1963 with counts 1 and 2 which were generally similar to present counts 3 and 4. At that time Kahn was senior party because his application had the earlier filing date.

During the motion period Phipard moved (1) to amend to add two dependent counts to the interference issue, and (2) to shift the burden of proof on the basis that he was entitled to be designated the senior party by reason of the earlier filing date of his 1960 application.

Kahn filed a timely motion to dissolve. The motion was directed solely to clause (f) of counts 1 and 2 which then read:

(f) the surface of the protuberance on at least the forward side thereof in the direction toward said tip sloping smoothly and gradually from the flank of said thread to said boundary at a means sic angle with respect to the screw axis slightly greater than the angle of the pitch line of the thread with respect to said axis, Emphasis added.

It was Kahn's position on this motion that the recitation in this clause of the emphasized portion prevented either party from making the count, and further that it was "vague, indefinite, confused and misdescriptive."

Phipard then moved to substitute new counts for counts 1 and 2. In the proposed new counts, the recitation in question in clause (f) was shortened by deleting the words "of the pitch line."

Kahn filed briefs in opposition to Phipard's motions, stating with respect to the motion to shift:

* * * the subject-matter of the Interference Counts 1 and 2 simply is not disclosed in the earlier Phipard application for the same reason that these Counts are not disclosed in the later Phipard application as originally filed in the U.S. Patent Office. Emphasis added.

On June 25, 1964 the primary examiner granted the Kahn motion to dissolve, holding that the language of clause (f) in counts 1 and 2 was indefinite. He also denied Phipard's motions to add the proposed dependent counts and to shift the burden of proof, characterizing the latter as immaterial. In denying Phipard's motion to substitute counts, the examiner observed that the proposed deletion of the phrase "of the pitch line" in clause (f) overcame one of Kahn's objections to the clause, but held that the retention of the terminology "mean angle" left the language indefinite.

In the same decision, however, the examiner suggested two substitute counts which ultimately became counts 3 and 4 here in issue. These counts are identical in substance to the original counts except that the language in clause (f), relied upon by Kahn in his motion to dissolve, was deleted completely. Clause (f) in former count 1 was thus shortened to read:

(f) the surface of the protuberance on at least the forward side thereof in the direction toward said tip sloping smoothly and gradually from the flank of said thread to said boundary line,

A period of 60 days was set for the parties to make the suggested counts and file preliminary statements with respect thereto.

Both parties filed timely amendments making the suggested counts. At the same time he made the counts, Kahn stated that he was "at a loss" as to why the proposed counts were submitted to Phipard "because of the normal estoppel running against the Junior Party Phipard". Phipard, in making the proposed counts, stated that his earlier copending application supported the new counts and requested that he be accorded the benefit of the filing date of that case in the redeclaration of the interference.

On November 16, 1964, the primary examiner rendered a supplemental decision in which he rejected Kahn's assertion of estoppel against Phipard⁵ and granted the Phipard motion to shift the burden of proof.

On December 14, 1964, Kahn requested reconsideration of this decision, asserting that the examiner had no right to shift the burden of proof, since the interference had been dissolved. He also argued for the first time that clause (c) of the new counts was not readable on the disclosure of either party and that clause (g) of the counts did not read on Figs. 1-12 of Phipard's applications. Kahn additionally argued, if clause (g) was interpreted to read on Phipard's Figs. 1-12, that the counts were unpatentable over a patent to Tinnerman.⁶ The primary examiner dismissed Kahn's request for the reason that it was not presented within 20 days of the decision as required by Rule 244(c).

On March 19, 1965, the interference was redeclared on the examiner's suggested counts with Phipard designated senior party. On April 8, 1965, Kahn requested reconsideration of the redeclaration of the interference. He requested that a new motion period be set so that he could file a motion to dissolve the interference and also to be made senior party. The interference examiner considered this request as actually seeking review of the primary examiner's decisions of June 25, 1964 and November 16, 1964 and, as such, that it was filed too late.

Kahn then petitioned the Commissioner challenging the refusal of the examiner to set a new motion period. The Commissioner denied this petition, stating:

* * * There has been ample opportunity for Kahn to present and argue his objections to the proposed counts in the form of a timely petition for modification of the Primary Examiner\'s decision. In this connection attention is

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