Knorr v. Pearson, Appeal No. 81-604

• Decision Date: 25 February 1982
• Docket Number: Appeal No. 81-604,81-605.
• Citation: 671 F.2d 1368
• Parties: William L. KNORR, Appellant, v. Robert Joseph PEARSON and Rodney G. Buergin, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

671 F.2d 1368

William L. KNORR, Appellant, v. Robert Joseph PEARSON and Rodney G. Buergin, Appellees.

Appeal Nos. 81-604, 81-605.

United States Court of Customs and Patent Appeals.

February 25, 1982.

Arthur L. Whinston, Portland, Or., for appellant.

Allen H. Gerstein and Mary E. Bak, Chicago, Ill., and Robert T. Hause, Buffalo, N.Y., for appellees.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

MILLER, Judge.

This is a consolidated appeal from decisions of the Patent and Trademark Office Board of Interferences ("board") awarding priority of invention of all counts in two interferences to the junior party Pearson and Buergin ("Pearson et al."). We affirm.

BACKGROUND

The applications and patent¹ in interference relate to a sheet metal "I" beam stud for supporting gypsum wallboard in the construction of fireproof elevator shaft walls.

The entire "I" beam stud is formed from a single piece of sheet metal. The flat, vertical sides comprise an outer flange (layer) 22 with a 180° bend at one vertical edge and an inner flange (layer) 26 extending from the bend parallel to the outer layer 22 for about one-half the width of the outer layer. The two inner layers 26 and 50 are connected by a central web 12. The controversy here involves the provision of holes 32 in the outer layer 22 and a space 30 between the outer layer 22 and inner layer 26 of the elevator shaft side. When the stud is subjected to fire, the air inside the space between the layers is heated and rises. Cooling air is drawn into a hole at the bottom. Count 1 from interference 99,853 is representative:²

In a shaftwall, a plurality of vertical studs of sheet metal, each stud having at one side thereof an inner flange layer and an outer flange layer folded back on and spaced from the first flange to form a thin, vertical passage open at the top and one side,

the inner and outer flanges being parallel to each other and overlapping portions thereof forming a double thickness flange,

the overlapping portions of the second flange having an opening therethrough into the space between the flanges,

the openings being spaced low on the studs to admit air into the passages,

and gypsum boards secured to the other side of the studs.

In 1974, Studco, Inc. ("Studco"), assignee of Knorr, developed an "I" beam stud which had no holes in the outer layer and no appreciable space between the outer and inner layers. National Gypsum Co. ("National"), assignee of Pearson et al., a manufacturer of gypsum board, was interested in the stud, and on October 8, 1975, a panel constructed of Studco studs and National gypsum board was fire tested at the University of California Testing Facility. Both Knorr of Studco and Pearson of National were present. The panel failed to achieve an ASTM E-119 two-hour fire rating because, when the corridor side of a stud was exposed to fire, a thermocouple on the elevator shaft side of the stud registered a temperature rise of 325° after about 1 hour and 49 minutes. The record indicates that after the test, Knorr suggested putting holes in the outer layer of the elevator shaft side "to vent heated gases." Thereafter, on the same date, Pearson telephoned Buergin (coinventor) and told him of Knorr's suggestion. Buergin suggested opening a space between the layers to allow hot air in the space to rise and be vented and to allow cooler air to be drawn in.

On October 16, 1975, a panel constructed by Pearson using Studco studs (with holes in the outer layer) was fire tested ("test 500") and passed the ASTM test. Pearson testified that during construction of the panel, he enlarged the gap between the inner and outer layers of the shaft side of the stud (the side not exposed to fire during the test) with a screwdriver and crimped the edges of the outer layer.

Pearson et al. argue that the October 8, 1975, telephone call between Pearson and Buergin constituted a joint conception of the invention of the counts. Their corroborating witness, Mr. E. J. Rutkowski, was present in Buergin's office at the time of the telephone call and testified to the conversation which took place between the co-inventors. Pearson et al. further argue that the successful October 16, 1975, test constituted a reduction to practice. No witness testified that he had actually seen Pearson spread the layers on the stud used in test 500. However, Pearson prepared a handwritten report on October 16 in which he stated that the layers had been spread. Additionally, Pearson et al. introduced exhibit 24, allegedly a section of one of the studs used in test 500, to corroborate the asserted reduction to practice. Rutkowski stated that he had seen exhibit 24 the day after Pearson returned to Buffalo following test 500, or very soon thereafter, and that he had examined the stud with Pearson at that time. The layers on exhibit 24 bear marks from having been physically spread apart, as with a screwdriver. Pearson et al. also allege that Knorr derived the invention from them.

Knorr alleges prior conception of the invention and also relies on test 500 for actual reduction to practice. His testimony that he conceived putting holes in the outer layer on October 8 is corroborated by Pearson. He relies on the testimony of a consulting engineer, Neal L. Peterson, to establish conception of a gap between the inner and outer layers of the stud. Prior to the unsuccessful October 8 test, Peterson was employed to scale up the design of an approved 10-foot Studco stud to the 11-foot height required in certain shaft walls in the San Francisco Embarcadero Center. He testified that he performed the calculations, assuming a 0.125 inch gap between the layers; that the assumption of a gap between the folded over layers would tend to result in an increase in gauge thickness for any given stud height, and that this would result in increased costs. He offered no explanation for assuming a gap between the layers, but Knorr testified that he told Peterson that a gap was necessary, although no specific dimensions were communicated. Knorr also contends that Pearson et al. derived the invention from him.

Finally, Knorr takes the position that Studco's studs produced prior to October 16, 1975, would open up in a fire and produce the air passages between the layers required by the counts. In support of this argument, Knorr points out that exhibit 24, a stud section purportedly used in test 500, has a gap between the layers on both sides of the stud, although Pearson stated that he had enlarged the gap only on one side. When questioned about the gap on the second side, Pearson et al.'s witness Rutkowski stated:

Q. Now, do you have any explanations for the space on the corridor side?

A. Well, I would suspect it is due to the fire test. The expansions, the movement of the test panel, et cetera would relieve some stresses in the folded area here, the edge, and result in somewhat of an opening, as well as the wall bows in towards the fire. Normally, this would help these matters to open it up some more.

The Decisions Below

The board awarded priority of invention with respect to all the counts to the junior party Pearson et al. It held that Pearson et al. had conceived the invention no later than the October 16, 1975, test 500 and that they actually reduced the invention to practice on that date. The board stated:

In view of the testimony of Robert Pearson, particularly as it relates to Pearson's handwritten report, and the stud section, exhibit 24, and of admissions in the senior party's brief ... to the effect that exhibit 24 is a section of one of the modified studs used in the wall panel in Test 500 run on October 16, 1975 and that the gap between inner and outer layers of the flange was enlarged with a screwdriver and the flange edge crimped prior to this test, it is considered that the studs within the wall panel tested satisfy all the limitations of the counts 1 to 10.

The board further held that Knorr had not established conception of the invention of the counts prior to the termination of testing on October 16, 1975.

We do not consider that the "I" studs as produced at Studco prior to the above date included vertical air passages between inner and outer flanges. The senior party's record does not establish that Studco's studs were produced with a predetermined air passage between flanges and it would appear that any passage between flanges in a Studco stud would have been present through chance or accident. Accordingly, Knorr's idea on October 8, 1975 of putting holes in the overlapping exterior flange on the shaft wall side of his studs to vent heated gases does not mark the time at which he formulated a complete concept of the invention at issue. Knorr's idea appears to be nothing more than the desire to vent heated gases trapped in pockets between flanges.

Knorr's position that Studco's studs produced prior to October 16, 1975 would expand in a fire and would thereby provide air passages between flanges is not established, i.e. as by inter partes tests. Nor has he established his position that as of the October 16, 1975 test his belief was that in a fire a gap or passage would form between flanges of Studco's "I" stud.

Regarding consulting engineer Peterson's testimony, the board stated:

It is not considered that the testimony of Knorr and Peterson, and document KX 111 are sufficient to establish that Knorr suggested putting openings in the flanges of the studs to be used in the Embarcadero Center building. Peterson does not corroborate Knorr's testimony to the effect that he told Peterson that there must be a gap between flanges. Peterson's testimony merely indicates that his computations assume a gap to exist between the folded over layers of the stud flanges on both the corridor and shaft sides. Peterson does not state that Knorr instructed him to assume such a gap.

Finally, the board held that Knorr had failed to prove derivation by Pearson et al. because Knorr had...