Newkirk v. Lulejian, 87-1140

• Decision Date: 12 August 1987
• Docket Number: No. 87-1140,87-1140
• Parties: Mark C. NEWKIRK, Appellant, v. Donald A. LULEJIAN, Alphonse W. Faure and Eugene F. Fijalkowski, Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1581

825 F.2d 1581

3 U.S.P.Q.2d 1793

Mark C. NEWKIRK, Appellant, v. Donald A. LULEJIAN, Alphonse W. Faure and Eugene F Fijalkowski, Appellees.

No. 87-1140.

United States Court of Appeals Federal Circuit.

Aug. 12, 1987.

Michael P. Abbott, of Seidel, Gonda, Goldhammer & Abbott, Philadelphia, Pa., argued, for appellant. With him on the brief was Gregory J. Lavorgna, of Seidel, Gonda, Goldhammer & Abbott, Philadelphia, Pa John W. Logan, Jr., of Ferrill and Logan, Willow Grove, Pa., argued, for appellees. With him on the brief was David J. Johns, of Ferrill and Logan, Willow Grove, Pa.

Before FRIEDMAN, Circuit Judge, BALDWIN, Senior Circuit Judge, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

The decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences, awarding priority of invention in Interference No. 101,000 to Donald A. Lulejian et al., inventors of the subject matter claimed in U.S. Patent No. 4,313,750, is affirmed.

OPINION

Count 1, the only independent count, is representative:

1. A camless electronic glassware conveyor delivery apparatus having pushout robot means being in operative association with glassware forming apparatus having at least one synchronous operation point, comprising:

camless electronic means responsive to said synchronous point for electronically controlling said pushout robot rotational operation including a digital stepping motor operatively coupled to rotate said pushout robot, said motor speed being varied with pulse signals which vary according to a stored program; and

means for electronically altering said pushout robot rotational operation by changing said stored program, said altering means being connected to said controlling means.

The Board held that the junior party Newkirk had not proved reduction to practice of the claimed invention prior to the filing date (the earliest date proven) of the senior party Lulejian, for the reason that the embodiment of the invention relied on by Newkirk as proof of actual reduction to practice did not include every limitation of the interference count.

The dispositive question is whether Newkirk was required to show, with respect to the final clause of count 1, that he had achieved "at least successful operation with one program and a change to a second program for which there was also successful operation", in order to prove reduction to practice of count 1. The Board held that Newkirk was required to show that his physical embodiment of the apparatus not only had the capability of changing a stored program, but did actually operate before Lulejian's filing date with a changed stored program. The Board found that "the speed file programmed or stored in the PROM could not be altered", and indeed the factual findings on this point are not challenged.

Newkirk asserts that the Board erred in construing count 1 to require an actual program change, and that it is sufficient if the working embodiment was capable of storing and changing the program. It is well established, however, that proof of actual reduction to practice requires demonstration that the embodiment relied upon as evidence of priority actually worked for its intended purpose. Wiesner v. Weigert, 666 F.2d 582, 588, 212 USPQ 721, 726 (CCPA 1981) ("invention is not reduced to practice until its practicability or utility is demonstrated pursuant to its intended purpose"); Chandler v. Mock, 150 F.2d 563, 565, 66 USPQ 209, 211 (CCPA 1945) ("reduction to practice of a complex...