Kravig v. Henderson

• Citation: 53 CCPA 1534,362 F.2d 1015
• Parties: Robert S. KRAVIG and Arnold E. Johnson, Appellants, v. David J. HENDERSON, Appellee. Patent Appeal No. 7862.
• Decision Date: 06 August 1966
• Court: United States Court of Customs and Patent Appeals

53 CCPA 1534, 362 F.2d 1015 (1966)

Robert S. KRAVIG and Arnold E. Johnson, Appellants, v. David J. HENDERSON, Appellee Patent Appeal No. 7862.

United States Court of Customs and Patent Appeals.

July 14, 1966.

Rehearing Denied August 6, 1966.

Stanley G. DeLa Hunt, Harold J. Kinney, St. Paul, Minn., John H. Lewis, Jr., Washington, D. C., for appellants.

John J. Hart, New York City, for appellee.

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

MARTIN, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority as to all of the four counts remaining in interference No. 92,874 to David J. Henderson, the junior party.

The invention in issue relates to a machine for making decorative bows from a continuous length of ribbon. The machine includes a rotatable loop retaining means capable of retaining in fixed position relative thereto ribbon which is applied to it by a ribbon feed means which operates successively to apply spaced portions of the ribbon against the retaining means. The retaining means is caused to rotate between the successive applications thereto of ribbon portions so as to form a bow having loops radiating in different directions from the center. In Henderson's machine, the retaining means comprises a vertically disposed, rotatable spindle having permanently provided on its upper end a plurality of barbed needles on which the spaced ribbon portions are impaled and from which the formed loops of ribbon must be withdrawn when a bow is completed. In the Kravig machine, the retaining means is a horizontally disposed pin in the general shape of a collar button, which pin is releasably held in the machine during the bow forming operation and then removed as part of the completed bow. Both parties disclose the provision of a shaft for rotatably supporting a supply roll of ribbon.

In issue are counts 1, 2, 3 and 6 of which 1 and 3 are representative:

1. In a machine for making decorative bows from a continuous length of ribbon or strip material, rotatable loop retaining means and ribbon feed means, said retaining means being adapted to retain in fixed position relative thereto and rotatively therewith ribbon applied thereagainst, said feed means operating successively to apply portions of ribbon spaced along the continuous length thereof against said retaining means successively to form radiating loops of ribbon.

3. A machine for making decorative bows from a continuous length of ribbon comprising a shaft for receiving and rotatably supporting a supply roll of ribbon, rotatable loop retaining means and ribbon feed means, said retaining means being adapted to retain in fixed position relative thereto ribbon applied thereagainst; said feed means operating to withdraw a continuous length of ribbon from a supply roll mounted on said shaft and successively to apply portions of ribbon spaced along said continuous length against said retaining means successively to form radiating loops of ribbon, said retaining means being caused to rotate between each application of a ribbon portion thereto, said loops thereby being twisted as they are formed and being disposed on different radii.

Count 2 relates to the same combination as count 1. Count 6, like count 3, calls for a combination additionally including a supporting shaft for the supply roll of ribbon.

The counts correspond to claims 1, 2, 5 and 17 of patent No. 2,933,223 issued to the senior party Kravig and Johnson (Kravig) April 19, 1960 on application serial No. 750,396, filed July 23, 1958. Henderson is involved in the interference on the basis of application serial No. 98,043, filed March 24, 1961 as a division of application serial No. 78,900 filed December 28, 1960.

Since the effective filing date of Henderson is subsequent to the issue date of the Kravig patent, he has the burden of proving priority beyond a reasonable doubt. Conner v. Joris, 241 F.2d 944, 44 CCPA 772; Paivinen v. Sands, 339 F.2d 217, 52 CCPA 906.

Both parties took testimony.

The testimony for Henderson relates to activities in connection with bow making machines alleged to have started in about 1954 and extended past the filing date of his application in 1960. Kravig introduced testimony directed to the development of bow making machines starting around 1957. He also took testimony in rebuttal of certain testimony of Henderson.

The board based its award of priority on the conclusion that Henderson "established with the required weight of evidence" the introduction into the United States of his first machine, which it designated "the precursor to the modified device illustrated in Exh. 3A and 3B," and the actual reduction of practice thereof in the United States, "at least as early as the spring of 1956." It further held that the structure of that first model "embodies and clearly supports the language of each of the counts setting forth the invention * * *," commenting that the "senior party nowhere in the record controverts this view." In request for a reconsideration before the board and here, Kravig does question the latter conclusion particularly as to the shaft for receiving and rotatably supporting a supply roll of ribbon in counts 3 and 6. The principal issues hence are whether the board was correct in finding that Henderson proved beyond a reasonable doubt that he reduced to practice the precursor of the modified device illustrated in Exhibits 3A and 3B and, if so, whether that structure meets the limitations of the counts, particularly counts 3 and 6.

It is shown by the record that Henderson, a citizen of Canada residing in Montreal West, conducted two businesses involving ribbon and bow manufacturing during the period of interest here. One business, called Beacon Ribbon Mills, was located at Valleyfield in Canada and produced ribbon, bows, tapes, cords, etc. The other, in Plattsburgh, New York, was carried out originally under the name of Beacon Ribbon Mills but the name was changed in about 1958 to Aranac Ribbon Mills, Incorporated. The Plattsburgh plant manufactured bows exclusively or substantially so.

Henderson testified that he wanted to make bows automatically and in 1954 conceived of and made a hand-operated model or machine embodying his conception. While the machine was made in Canada, it was brought to the United States by Henderson when he opened his Plattsburgh plant in April of 1955. Henderson testified that the machine was demonstrated there by making bows, and it was modified at times in a manner described by him. The model, as subsequently modified, is purportedly illustrated in Exhibits 3A and 3B, which are recent photographs of an actual structure present during the taking of testimony, at final hearing before the board, and at oral argument before us.

The record shows further that a series of several more models of ribbon bow making machines were built and tested, but, as noted by the board, the record is extremely confusing as to details concerning them. It is clear though that three more models were made, sometimes by using parts of a preceding machine and even then modified, but those activities were performed in Canada and the models apparently were never brought into the United States. A fifth model, also made in Canada was brought into the United States in 1958.

Returning then to the first model, Henderson testified, with Exhibits 3A and 3B and the model shown therein before him, as to the structure and operation of the model in such detail as the board considered sufficient for one skilled in the art to understand and practice the invention embodied therein. Further, he described the modifications that had been made in considerable detail thus giving a picture of the structure as originally built and used.

Henderson testified that the first model was one of the first things he brought to the United States to his plant in Plattsburgh when he opened it around April of 1955 and that he showed that model to Robert Glenn who eventually became his plant manager there. He stated that he made a great many samples of bows there in 1955; not "any production but a great many samples; these samples were shown to my accounts." He testified that the model was first installed in his first quarters in Plattsburgh which he maintained from April to August of 1955 and that, while it was in that first plant, he demonstrated it to Glenn, making bows for him.

Henderson testified on cross-examination that the model satisfied him with the principle of operation for making a bow but stated he "did not consider this a useful commercial device." Among the modifications he attempted was the speeding up of the machine by adding a stapler for stapling the finished bow together.

Glenn testified that he became manager of Henderson's plant in Plattsburgh in the early summer of 1955 after first meeting Henderson in early spring of that year when Henderson was moving into his first Plattsburgh quarters adjacent a parking lot Glenn was then operating. Glenn had been plant manager in Plattsburgh for the Pal Safety Razor Blade Company which sold out in 1953 to American Razor Company which, in turn, ultimately moved out in 1954.

With respect to the model of Exhibits 3A and 3B, Glenn stated he saw it a month or so after he met Henderson in "early Fifty-five, not later than June, Nineteen fifty-five." He testified that Henderson explained how the model worked, demonstrated the use of it and made bows on it. While testifying primarily concerning production of hand tied bows at a later date, in 1957, as their first commercial production, Glenn testified that before that time:

* * * A. We did not make any for sale. We were experimenting, trying to make bows. During this time we could make bows such as this.

Q. With the equipment shown on Exhibit Three-A and Three-B? A. But not much faster than you could do it by hand. The idea was still there but not developed far enough to be used

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