Manny v. Garlick

• Decision Date: 17 May 1943
• Docket Number: Patent Appeal No. 4711.
• Citation: 135 F.2d 757
• Parties: MANNY v. GARLICK et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

135 F.2d 757 (1943)

MANNY v. GARLICK et al.

Patent Appeal No. 4711.

Court of Customs and Patent Appeals.

April 5, 1943.

Rehearing Denied May 17, 1943.

COPYRIGHT MATERIAL OMITTED

Earl & Chappell, of Kalamazoo, Mich. (Munson H. Lane, of Washington, D. C., of counsel), for appellant.

Frank E. Liverance, Jr., of Grand Rapids, Mich., for appellees.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Interference Examiners of the United States Patent Office, which awarded priority of invention of the subject matter of all the counts in issue to Mark J. Garlick, one of the joint applicants in the application of the party Garlick, Lee and Barney.

The interference arose between a patent issued to appellant on July 25, 1939, upon an application filed July 14, 1938, and the joint application of the party Garlick et al. filed July 11, 1938.

Appellant being the junior party the burden was upon him to establish priority of invention by a preponderance of evidence.

There are six counts constituting the issue of the interference, numbered from 1 to 6 inclusive. Counts 1 and 2 are illustrative of the invention defined in the counts and read as follows:

"Count 1. In a machine for forming notched openings in a stack of sheets and the like, a boring tool, and a slotting tool located closely adjacent said boring tool, said slotting tool comprising a blade angular in cross section and having the work engaging edge thereof sharpened, said sharpened edge being substantially coplanar with the cutting edge of the boring tool, and means for reciprocating said tools together relative to the work.

"Count 2. In a machine for forming notched apertures in a stack of sheets or like work, a frame, a tool, means for positively actuating said tool on an operating stroke to and through work supported on the frame, including a reciprocating actuator member, spring means for returning the actuator member to initial position upon completion of the operating stroke, and means to cushion the actuator member at the end of the return stroke thereof, comprising a cylinder on the frame having a valved exit port and a plunger carried by the actuator member slidable in said cylinder."

The decision of the board states: "The counts relate to a machine for perforating and notching paper sheets in stacks. The sheets are of the type intended for use in loose leaf binders or filing cabinets. Prior to the production of the machines disclosed in the applications of the parties, such sheets were perforated and notched in two separate operations. The paper was first perforated by a machine of the type illustrated in patent No. 2, 193, 817 (Garlick et al. exhibit S). After the hole had been made in the sheets a notch or slit was cut from the hole to the adjacent edge of the sheets. The present devices have for their purpose the simultaneous drilling or perforating and notching of the sheets."

Both parties took testimony. It appears that Garlick died on September 15, 1940, before the decision of the board was rendered.

The board found that appellant had established conception of the invention as set forth in counts 1 and 3 to 6 inclusive by "the end of March, 1937," and as set forth in count 2 "by May 12, 1938"; that he was limited to his filing date, July 14, 1938, for reduction to practice; that Garlick "conceived counts 1 and 3 to 6 by July 12, 1937 and count 2 by November 2, 1937"; that he was limited to the filing date of the joint application, July 11, 1938, for reduction to practice of the invention; that while appellant was the first to conceive the invention defined in counts 1 and 3 to 6, he had failed to establish diligence in reducing it to practice, and that Garlick was the first to conceive and reduce to practice the subject matter of count 2.

It appears that appellant's patent has been assigned to the F. P. Rosback Company of Benton Harbor, Michigan, and the joint application of Garlick, Lee and Barney has been assigned to the Challenge Machinery Company of Grand Haven, Michigan.

The board also found that as between the joint applicants Garlick, et al., Garlick was the sole inventor of the subject matter of the counts.

In its decision the board stated as follows:

"The parties Garlick, Lee, and Barney contend that Garlick is the inventor of the subject matter of counts 1 and 3 to 6 and that Lee and Barney are the inventors of count 2.

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"Manny contends that Garlick et al. have failed to prove priority because they must rely upon their own testimony and since joint inventors may not corroborate each other their proofs are insufficient. Garlick et al. contend that the proofs establish sole inventorship by Garlick of counts 1 and 3 to 6 and joint inventorship by Lee and Barney of count 2.

"It is believed that the record clearly establishes that Garlick is in fact the sole inventor of the subject matter of counts 1 and 3 to 6. It is also believed that the application of the Garlick invention to a power operated machine of the EH type rather than the foot operated E type involved nothing more than obvious mechanical skill. The work of Lee and Barney therefore inures to the benefit of Garlick who must be held to be the sole inventor of all the subject matter in issue.

* * * * *

"Priority of invention of the subject matter in issue is hereby awarded to Mark J. Garlick as sole inventor."

Appellant's reasons of appeal are 15 in number. The first two of these reasons are the usual broad assignments of error in awarding priority to appellee and not awarding it to appellant. The following nine reasons relate wholly to alleged errors of the board with respect to conception, reduction to practice and diligence by appellant.

Reasons of appeal 12, 13 and 14 relate wholly to count 2 of the interference. In number 12 it is alleged that the board "erred in holding that Garlick had conceived the invention of count 2 by November, 1937." In number 13 it is alleged that the board erred in holding that Garlick "had anything to do with the invention of count 2" and in number 14 it is alleged that the board erred in "holding that either Garlick or the party Garlick, Lee and Barney had any right to make the claim which constitutes count 2 of the interference and erred in failing to dissolve the interference as to said count."

As to this last named reason of appeal, while it appears that the examiner denied a motion by appellant to dissolve the interference with respect to count 2, it does not appear from the record that appellant raised this question before the board. It was not referred to in the decision of the board and in appellant's brief before us it is not pointed out in what particulars the disclosure of the Garlick et al. application fails to support the count. Therefore this reason of appeal will not be considered by us.

With respect to counts 1 and 3 to 6 there is no reason of appeal challenging the finding of the board based upon the testimony as to the dates to which Garlick is entitled for conception and reduction to practice.

It will be observed from the foregoing that an unusual situation is presented in that the board has awarded priority of invention to one of the applicants in a joint application.

That matter will be discussed hereinafter, and in view of our conclusion with respect thereto, it would not be necessary for us to review in this appeal the holding of the board that Garlick was, in fact, the first inventor of the subject matter of counts 1 and 3 to 6. It is our opinion, however, that the final termination of this interference may perhaps be expedited if the findings of the board be reviewed at this time with respect to the factual question of inventorship as between appellant and Garlick, and we will therefore proceed to consider that matter.

With respect to counts 1 and 3 to 6, as hereinbefore noted, the board found that appellant had conceived the subject matter by the end of March, 1937, and limited him to his filing date July 14, 1938, for reduction to practice. It also found that appellant was not diligent in reducing the invention to practice. Appellant accepts the finding of the board with respect to date of conception but contends that the evidence establishes that he reduced the invention defined by these counts to practice in March, 1937, again in August, 1937, and again in January, 1938. If any of these dates are established, then, assuming that the dates awarded to Garlick are correct, the board erred in finding that Garlick was the first inventor.

Appellant also contends that the board erred in holding that appellant was not diligent in reducing the invention to practice.

It appears that appellant is a designer in the employ of the F. P. Rosback Company, appellant's assignee; that said company, among other things, manufactures machines for forming slotted openings in sheets to adapt them for use in binders or other holders; that in said manufacture both drilling and slotting operations are involved, which theretofore were performed successively. The problem of devising a machine which would perform these operations simultaneously was submitted to appellant by Mr. Rosback, the general manager of the company.

Appellant testified that he invented such a machine and tested it. No specific dates were named by appellant with respect to the invention prior to October 6, 1937. As to specific dates he testified as follows: "A. I could not call dates, my memory is too poor for that, but all this work followed along the general line and it was not abandoned at any time."

Appellant did testify, however, that the problem was submitted to him upon Mr. Rosback's return from a certain train trip, which Rosback testified occurred just before December 25, 1936. He also testified that appellant completed and tested the machine corresponding to said counts about the middle of March, 1937.

With...