McCutchen v. Oliver

• Citation: 367 F.2d 609,54 CCPA 756
• Decision Date: 27 October 1966
• Docket Number: Patent Appeal No. 7425.
• Parties: Samuel P. McCUTCHEN, Jr., and Jack E. Eskilson, Appellants, v. Francis A. OLIVER, Appellee.
• Court: United States Court of Customs and Patent Appeals

54 CCPA 756, 367 F.2d 609 (1966)

Samuel P. McCUTCHEN, Jr., and Jack E. Eskilson, Appellants, v. Francis A. OLIVER, Appellee.

Patent Appeal No. 7425.

United States Court of Customs and Patent Appeals.

October 27, 1966.

William E. Schuyler, Jr., Washington, D. C., Eber J. Hyde, Cleveland, Ohio (Harry C. Page, Cleveland, Ohio, of counsel) for appellants.

Louis A. Kline, Dayton, Ohio (John T. Matlago, Nathan Cass, Hawthorne, Cal., William T. Estabrook, Washington, D. C., of counsel), for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

SMITH, Judge.

This is an appeal from a decision of the Board of Patent Interferences awarding priority of invention in Interference No. 91,815 to Oliver, the senior party.¹ The two counts in issue originated as claims in a patent² to McCutchen, Jr., and Eskilson, the junior party, hereafter McCutchen.

Both parties took testimony in attempting to establish priority. The board, upon consideration of the evidence, held that Oliver had reduced to practice "as early as the end of May 1955" and McCutchen was "accorded July 28, 1955 for reduction to practice." The board also held that "Oliver is entitled to make the claims corresponding to the counts." Appellant argues here that first, Oliver's disclosure does not support the counts and second, Oliver's evidence does not establish a reduction to practice at the end of May 1955. Our disposition of this appeal requires only a consideration of Oliver's disclosure. In this respect we agree with appellant's arguments and the decision of the board therefore must be reversed.

The test to be applied where it is alleged that a disclosure does not support a claim for interference purposes is that which was recently applied in Henderson v. Grable, 339 F.2d 465, 52 CCPA 920. There Judge Martin, speaking for an unanimous court, reaffirmed this court's position, stating as follows:

* * * As Judge Rich stated for this court in Hall v. Taylor, 332 F.2d 844, 51 CCPA 1420, 1424:

We find in the Dreager In re Draeger et al., 150 F.2d 572, 32 CCPA 1217, opinion what we consider the key to determining whether a disclosure supports a claim for interference purposes * * * viz., does the disclosure teach the gist of the invention defined by the claim?

See also Swain et al. v. Crittendon, 332 F.2d 820, 51 CCPA 1459.

The "gist of the invention" test referred to in the Henderson case is a sound principle of interference law and is the key to determining whether the counts here in issue are supported by the Oliver disclosure. As this court stated in Henderson, supra, 339 F.2d at 470:

Appellee and the board cite numerous cases in support of classic propositions of interference law, such as, clearly expressed limitations may not be disregarded, all recitations are material, equivalency of function may not be considered, and so on. We do not disagree, but a study of those cases shows that they are not apposite to the facts here. * * *

"The gist of the invention," states probably more clearly than other propositions of interference law, that the purpose of an interference is to determine "priority of invention," 35 U.S.C. § 135, 35 U.S.C. § 102(g). There is no right to an interference under the patent laws unless the counts are supported by the specification of the applicant who copies a claim from another's patent. This requires at a minimum that such specification disclose the mutually claimed invention. Unless it does, the inquiry as to priority should come to an end.

THE INVENTION(S)

The counts in issue are as follows:

1. A magnetic transducer head unit comprising a magnetic head having opposite pole pieces presenting confronting lapped pole tips on opposite sides of a recording/reproducing gap, and a bracket supporting said head and presenting at either end of the head broad reference surfaces lapped co-planar with the pole tip of one of said pole pieces.

2. A multichannel magnetic transducer head unit comprising a series of individual magnetic heads, each of said individual heads comprising opposite pole pieces presenting confronting lapped pole tips on opposite sides of a recording/reproducing gap, and a bracket supporting said individual heads in side-by-side relation with their respective lapped pole tips coplanar and their recording/reproducing gaps aligned, said bracket presenting at either end of the series of heads broad reference surfaces lapped coplanar with the pole tips at one side of the aligned recording/reproducing gaps.

The statutory requirement of section 112 is that the claims shall particularly point out and distinctly claim "the subject matter which the applicant regards as his invention." Here the claims of the McCutchen patent which were copied by Oliver to become the counts of the present interence are so worded that reference to the specifications of the respective parties becomes necessary to ascertain the meaning of certain language therein. One cannot arrive at an understanding of the present counts as they relate to the subject matter of the interference without something more than the counts themselves.

Admittedly verbal similarities exist between the counts and the respective disclosures of the parties. However, to stop here is to violate the spirit of 35 U.S.C. § 135 which authorizes interferences where two or more parties claim "the same subject matter."

Thus the issue cannot be decided here in the rarified atmosphere of claim semantics. Instead, it must be decided at the down to earth level of what the parties disclosed as "the gist" of their respective inventions. Cf. Hansgirg v. Kemmer, 102 F.2d 212, 26 CCPA 937.³ While an "unambiguous" count may be interpreted without resort to the specification, the counts here are not of this type. Considering the wording of the counts, particularly the term "reference" surfaces, and the arguments of the parties, it is clear that different meanings are ascribed to that term by the parties when interpreting the count. When resort is had to the specifications, the latent ambiguity in the counts becomes apparent.

For appellee to prevail here, it is necessary to find such similarities of the inventions as to support the conclusion that the parties are asserting inventorship of substantially the same invention. 35 U.S.C. § 135.

There is no dispute that both parties were concerned with the same problem: how to construct an interchangeable multiple transducer head mounting unit which would not cause distorted signals to be read from the tape when the heads were changed. Both parties disclose structures in which one mounting unit could be substituted in precisely the same position as another unit. As background it is clear that prior to the work of either party as it was old in this art to construct a transducer head from two core sections wherein the core sections are separated by a recording/reproducing gap. Also, multiple transducer heads were old in the art.

The "gist" of the inventions disclosed by McCutchen and by Oliver is more readily understood by reference to the drawings from their specifications which show preferred embodiments of their respective inventions.

COPYRIGHT MATERIAL OMITTED

Oliver's disclosed invention by reference to Fig. 5 is seen to embody ten core sections which are placed in each of two housings 13. The two housings when joined together, as shown in Fig. 2, form a mounting unit 10. Oliver teaches one to place the core sections in each housing, and then pour an epoxy resin around the core sections to hold them in position. Thereafter, insofar as it is relevant here, two grinding operations are performed on the mounting unit: (1) grind "entire inner surface 28 * * * true and flat;" and (2) grind "back surface 29 of housing 13 * * * to a fixed dimension, parallel to polished inner surface 28." After assembly of two housings in one mounting unit, this unit may be placed into holder 40, Fig. 2, and positioning, as relevant here, is achieved through the cooperation of "the precisely machined back surface 29" against "the likewise precisely machined inner" surface of holder 40 of the tape unit. The specification states:

* * * this type of construction renders alignment of the head gap with respect to the channels on the magnetic tape a simple procedure inasmuch as the outer surfaces of the metallic housings can be precisely machined parallel with the gaps of the heads, and to the same dimensions.

Now, considering McCutchen's invention, we find in Fig. 3 that a bracket with two frame members, 10 and 30, is disclosed. According to the specification, "The second frame member 30 in the bracket is essentially identical to the above-described frame member 10, except that it is substantially shorter at each end." After inserting the core sections in the frame members, each assembly is lapped. The two frame members are then placed together and a potting material is poured around the core sections. The specification states:

With the parts secured together in this fashion, it will be apparent from Figs. 3 and 4 that the broad lapped front faces 10a\' and 10b\' on the frame member 10 are exposed at either end of the head unit and serve as reference surfaces aligned with the recording/reproducing gaps of the individual heads in the unit. This novel structural feature of the present head unit may be used advantageously when mounted as shown in Figs. 3 and 4. * * *

In actual practices, rather than starting with different sized frame members 10 and 30, it may be preferable to have these frame members identical initially. Then, after the frame and pole piece sub-assemblies have been assembled together, the ends of one of these identical frame members are cut off to leave the front faces on the other frame member exposed at either end, resulting in the head unit shown in Figs. 3 and 4.

Comparing the two inventions as thus disclosed, can it be said that Oliver discloses the gist of the McCutchen invention? Our answer is "no." McCutchen, in...