Mead v. McKirnan, Appeal No. 78-542.

• Decision Date: 07 December 1978
• Docket Number: Appeal No. 78-542.
• Citation: 585 F.2d 504
• Parties: Keith C. MEAD, Appellant, v. Robert A. McKIRNAN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

585 F.2d 504

Keith C. MEAD, Appellant, v. Robert A. McKIRNAN, Appellee.

Appeal No. 78-542.

United States Court of Customs and Patent Appeals.

October 26, 1978.

Rehearing Denied December 7, 1978.

Richard R. Trexler, Chicago, Ill. (Olson, Trexler, Wolters, Bushnell & Fosse, Ltd., Chicago, Ill.), atty. of record, for appellant; Charles L. Sturtevant, Arlington, Va., of counsel.

Edward M. Keating, Chicago, Ill. (Kinzer, Plyer, Dorn & McEachran, Chicago, Ill.), atty. of record, for appellee.

Before RICH, BALDWIN, MILLER, KASHIWA^* and FORD,^* Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Patent Interferences (board) making a pro forma award of "priority" of invention to the junior party McKirnan. We affirm.

Mead is involved on application serial No. 430,957, entitled "Child Resistant Overcap for Aerosol or Like Containers," filed January 4, 1974, as a continuation of application serial No. 185,339, filed September 30, 1971,¹ which was a continuation-in-part of application serial No. 81,228, filed October 16, 1970. Mead was accorded senior status on the basis of the September 30, 1971, filing date.

Junior party McKirnan is involved on his patent No. 3,854,622, issued December 17, 1974, on application serial No. 312,284, filed December 5, 1972, entitled "Childproof Cover." Mead took no testimony, relying solely on his filing date.

Mead copied McKirnan's patent claims 1-6 and they are the counts in interference. They read (emphasis ours):

Count 1

A childproof cover for a container such as an aerosol container having a roof, a circular collar located on said roof with said collar having an undersurface positioned above said roof, said cover being formed of a flexible plastic and including:

a circular top, and outer skirt depending from said circular top, an inner skirt coaxial with said outer skirt and also depending from said top, a pair of lips projecting inwardly from the lower end of said inner skirt and positioned to engage the undersurface of said circular collar when said cover is positioned on said container, said lips being spaced from and located opposite each other, a pair of slits formed in said inner skirt and extending from the lower edge thereof towards the circular top with said slits being located generally diametrically of each other and between said lips, and

a pair of webs connecting said outer and inner skirts with said webs positioned relative to said slits so that forces inwardly applied to opposite sides of said outer skirt at the lower edge thereof adjacent said slits will cause distortion of said outer skirt and radially outward movement of said webs which in turn will cause distortion of said inner skirt and release of said lips from engagement with the undersurface of said circular collar.

Count 2

The childproof cover of count 1 in which said webs are located at right angles to said slits.

Count 3

The childproof cover of count 1 in which indicia indicating pressure applying areas are formed on the exterior of said outer skirt adjacent the lower edge thereof with said indicia positioned at right angles to said ribs.

Count 4

The childproof cover of count 1 in which said indicia are aligned with said slits.

Count 5

The childproof cover of count 1 in which additional webs are provided to connect the inner and outer skirts with said ribs being arranged in pairs located on opposite sides of each of said webs.

Count 6

The childproof cover of count 1 in which said lips are arcuate shaped and each extends through an arc less than that of its portion of said inner skirt.

McKirnan's Figs. 2 and 3 with added notes will assist in understanding this discussion.

See following illustration.

Background

Before McKirnan joined Knight Engineering & Molding Company (Knight) as president in July 1970, Knight had developed a tamper-proof cap which an adult could remove only by use of a tool or instrument. This cap comprised four webs connecting the inner and outer skirts, a continuous lip on the inner skirt, and a slot running the entire length of the inner skirt, and is the subject of the U.S. Patent No. 3,870,187² to Bennett, president of Knight before McKirnan's arrival.

When McKirnan began at Knight in July 1970, he almost immediately directed the experimental work toward redesigning Bennett's tamper-proof cap to produce a child resistant one, supposedly removable by an adult, but not a child, without a tool. It was he who discovered that Bennett's tamper-proof cap could be removed not only by prying, but also by squeezing. Further, McKirnan conceived the use of two slots in the inner skirt and indicia on the outer skirt about July 15, 1970.

On September 16, 1970, Bennett, then sales manager of Knight, met with appellant Mead of Dow Chemical Company (Dow) to discuss a cap for Dow Oven Cleaner. Bennett testified that he told Mead about Knight's study of squeezing off the cap and showed him how slots were to be cut.

No later than October 4, 1970, McKirnan had revealed his conception of slots and indicia to Blackwell, a Knight employee. At a December 8, 1970 meeting with Dow personnel, the Knight representatives disclosed the complete conception of and suggested modifications to the childproof cap required for use with Dow dispensers. Dow's Mead and Potter contributed neither any elements of the cap nor any changes thereto. Thereafter, on December 23, 1970, Dow issued a purchase order release indicating knowledge of the cap and approval of changes discussed at the December meeting.

From January to August 1971, Knight varied slot lengths and the inner skirt width to determine an optimally fitting cap for Dow. However, Dow was dissatisfied with the results and abandoned the childproof cap project with Knight in November 1971.

In July 1972, McKirnan revived a cap he apparently had produced as a mock-up in September 1971, having two additional webs, for a total of six, and segmented lips (as in Fig. 3, supra). This cap was tested for compliance with Federal Food and Drug Administration poison prevention packaging standards, accepted by Dow, and eventually supplied to Dow in 1973 for use with oven cleaner dispensers.

Issue

McKirnan raised the question of originality, charging Mead with deriving the complete invention of the counts from him. The issue before the board was whether McKirnan conceived and communicated the invention to Mead prior to the latter's filing date of September 30, 1971, on which he relies.

The Board Opinion

The board found that count 1 requires the lips to be spaced from each other, but not spaced from the slots as Mead argued. Hence, McKirnan's...