Kleinman v. Steinbach, Patent Appeals No. 5703.

• Decision Date: 06 March 1951
• Docket Number: Patent Appeals No. 5703.
• Citation: 187 F.2d 743
• Parties: KLEINMAN v. STEINBACH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

187 F.2d 743 (1951)

KLEINMAN v. STEINBACH.

Patent Appeals No. 5703.

United States Court of Customs and Patent Appeals.

March 6, 1951.

Jacob L. Kleinman, pro se.

Conrad Christel and Edwin T. Bean Buffalo, N. Y. (Bean, Brooks, Buckley & Bean, Buffalo, N. Y., of counsel), for appellee.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Judges.

GARRETT, Chief Judge.

This is an interference proceeding which comes before us by appeal from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority to appellee.

The subject matter is described in the decision of the board as "an electric dry shaver having a shaving head including a stationary member and a complementary reciprocating movable member arranged to provide two, or more, separated cutting zones."

Two counts are involved. They read:

"Count 1. A shaving device comprising a handle and hair shaving means secured to said handle, said hair shaving means comprising a plurality of individual spaced apart laterally-shearing cutting units, each of said units comprising cooperating stationary and movable shearing elements, said stationary shearing elements provided with shearing edges disposed laterally with respect to the top face of said units, the movable shearing elements engaging the stationary shearing elements in cutting relation along a plane which is at an angle to the plane tangent to the tops of the units, actuating means arranged within said handle and extending therefrom to engage the said movable elements to move the same in unison and transversely of said handle, and a guard extending at least in part over the movable teeth.

"Count 2. A shaving device comprising a handle and a plurality of shaving heads, each of said heads including a stationary member and a movable member, said members provided with cutting teeth and hair passages, at least portions of said shaving heads having cutting teeth which are laterally disposed and engage in shearing relation along a plane which is at an angle to a plane perpendicular to the longitudinal axis of the handle, the hair passages defining said laterally disposed teeth arranged to receive the hair on a bulge of the skin immediately in advance of the shaving head when the shaving device is applied against the skin, such hair entering into said laterally disposed hair passages and intersecting the said angularly disposed shearing plane, whereby an enlarged area of shaving contact between the skin and said shaving head is provided as the bulge of the skin wipes against the shaving head."

The counts originated as claims 4 and 8 in a patent reissued (Reissue No. 22,638) to Kleinman April 24, 1945, upon an application filed August 18, 1944, for the reissue of his patent 2,238,813 dated April 15, 1941, granted upon application, Serial No. 326,894, filed March 30, 1940.

The application of Steinbach, Serial No. 93,796, was filed August 1, 1936.

So, Steinbach is the senior party.

The claims which constitute the counts were copied by Steinbach into his application as claims 76 and 80 and the interference was declared, May 14, 1947.

The following historical statement is taken from the decision of the Board of Interference Examiners and here reproduced as a part of the background of the case:

"The controversy between these parties started when Steinbach copied claims from the Patent No. 2,238,813, to Kleinman. An interference was instituted. Thereafter Kleinman commenced civil action for infringement against Steinbach's assignee, Remington Rand, Inc. (Jacob L. Kleinman v. Remington Rand, Inc., U.S.D.C. So.D.N.Y., Civil 19/343). The civil action resulted in a judgment against Kleinman based on a finding that the claims in suit were unpatentable over the prior art, noting principally one Spanish patent to Giaztarro, No. 135,728. The interference went to judgment on priority in favor of Steinbach. Kleinman appealed from the judgment of the District Court, but before it came on for hearing entered into an agreement with Remington Rand, Inc., and the court action was terminated by stipulation. The agreement included a concession of priority of Kleinman of the subject matter of the interference in favor of Steinbach — although the latter proceeding had gone to judgment five months earlier — and a very comprehensive general release by Kleinman of the Remington Rand, Inc., from legal action. Subsequent to the termination of the civil action, Kleinman filed the application for reissue of his patent, here involved, which contained a new set of claims. The oath accompanying the application for reissue set forth the belief that the court had held the patented claims not to involve invention over the prior art because they were `too broadly and/or ambiguously and/or functionally drawn and did not define precisely the specific invention disclosed', and that the new claims defined the invention more precisely. The Examiner indicated the claims to be allowable in his first letter, but made some formal requirements. Upon compliance with the letter the application was finally allowed.

"The Steinbach application was still pending when the Kleinman Reissue Patent appeared, and some of the new claims of Kleinman, including the counts here involved, were copied in it. The Primary Examiner rejected those claims on the ground that Steinbach could not make them, but upon appeal the Board of Appeals reversed the Examiner as to the claims corresponding to the counts."

The record discloses a preliminary statement of Kleinman filed September 29, 1947, in which he alleged reduction to practice "on or about the first of May, 1934 and at various times thereafter, including the spring and early summer of 1936."

The record does not contain a preliminary statement by Steinbach and apparently no testimony was ever taken in the case.

On November 14, 1947, according to a statement in "Letter of Patent Interference Examiner, December 5, 1947," Kleinman filed two motions to dissolve, Motion No. 1, being on the ground of estoppel and Motion No. 2 (the only one contained in the record before us), upon the ground that the counts in issue are not supported by the disclosure of the Steinbach application.

The letter of the Patent Interference Examiner reads:

"On November 14, 1947, the party Kleinman filed a motion to dissolve on the ground of estoppel (Motion No. 1) and a motion to dissolve on the ground that the counts in issue are not supported by the disclosure in the Steinbach application (Motion No. 2). The former motion is, in substance, a duplicate of the `Petition to Commissioner for Judgment' which was filed by the party Kleinman on May 31, 1947. By the order of June 24, 1947, consideration of the Kleinman petition for Judgment was `deferred until at least after preliminary statements have been received and approved.'

"Examination of the Kleinman motion to dissolve on the ground of estoppel reveals that it is based on assertions of facts which do not appear in the Patent Office records but would require the taking of testimony to establish them. The present record is inadequate to pass upon the merits of this motion and it is therefore dismissed.

"As stated above, the party Kleinman's petition for judgment is a substantial duplicate of the motion to dissolve on the ground of estoppel which was discussed in the preceding paragraph. This petition for judgment is, of course, also based on assertions of facts which do not appear on the record and which could be established, if at all, only by the taking of testimony. Consideration of this petition for judgment is therefore deferred to final hearing.

"Kleinman's second motion to dissolve is on the ground of the party Steinbach's lack of right to make the counts in issue. It appears from the Steinbach application file that this rejection was once made by the Primary Examiner and considered by the Board of Appeals. In a decision rendered by the Board of Appeals on March 3, 1947, this rejection of claims 76 and 80 in the Steinbach application was reversed. Under such circumstances, in accordance with the decision in Janeway v. Nystrom et al., 168 Ms.D. 287 (Interference No. 81,967; Patent No. 2,352,400 granted to Nystrom et al.), consideration of the question of the party Steinbach's right to make the counts in issue is deferred to final hearing.

"On June 12, 1947, the party Steinbach filed a reply seeking judgment on the record in view of the judgment in Interference No. 79,819. Consideration of this matter is likewise deferred to final hearing. Kelling v. Peltzer, 58 U.S.P.Q. 334; Smith v. Hurd, 72 U.S.P.Q. 371.

"Since all the aforementioned matters have been dismissed or deferred to final hearing, times for taking testimony remain as set in the order of October 3, 1947."

As has been stated, no testimony was taken and the controversy passed to the jurisdiction of the Board of Interference Examiners.

Immediately after quoting the counts, the board stated that the question here presented is whether the disclosure of the senior party Steinbach supports the counts and proceeded to a comprehensive discussion of them. Its only discussion of the matter of estoppel, aside from the statement of its holding that "there is no estoppel against his Steinbach's assertion of the counts," reads: "The claims were presented by Kleinman after his original claims had been held invalid by the Court as unpatentable over prior art, and after certain of them were awarded to Steinbach in an interference, circumstances which would demand particular care in drafting distinguishing limitations. We do not see that there is any estoppel against Steinbach instituting proceedings to protect his award. An estoppel, if one lay, would be against Kleinman, since the...