Nolop v. Smith, Patent Appeal No. 2187.

• Decision Date: 13 January 1930
• Docket Number: Patent Appeal No. 2187.
• Citation: 36 F.2d 838
• Parties: NOLOP v. SMITH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

36 F.2d 838 (1930)

NOLOP v. SMITH.

Patent Appeal No. 2187.

Court of Customs and Patent Appeals.

January 13, 1930.

Fred H. Hayn, of Los Angeles, Cal., for appellant.

Watson E. Coleman and Frederick S. Stitt, both of Washington, D. C., for appellee.

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

LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents in an interference proceeding, affirming a decision of the examiners in chief which affirmed a decision of the examiner of interferences awarding priority of invention to appellee.

The invention relates to a plumbing fixture, and is described in the two counts in issue, which read as follows:

"Count 1. In a flush tank, the combination with a float ball having an arm, an overflow pipe and means secured to said overflow pipe for engaging said arm and limiting the downward movement of said ball.

"Count 2. In a flush tank, the combination of a float ball having an arm, an overflow pipe and means for limiting the downward movement of said ball, said means comprising a hook secured to said overflow pipe, said hook being adapted to engage the arm of said float ball."

Patent was issued to appellant on December 9, 1924, upon an application filed February 19, 1924.

Appellee's application was filed March 14, 1925.

The interference was declared by the Commissioner on May 29, 1925.

The preliminary statement of appellant was filed on June 22, 1925, and that of appellee in July, 1925.

The dates set up in appellant's statement are as follows: Conception, November, 1922; drawing, March, 1923; model, October, 1923; disclosure, December, 1923 (model and explanation); reduction to practice, December 9, 1924.

The dates set up in appellee's statement are as follows: Conception, March, 1921; drawing, September, 1921; model, September, 1921; disclosure, October, 1921; reduction to practice, September, 1921.

Both parties introduced testimony in support of their respective contentions.

All three tribunals concurred in awarding priority to appellee, the Examiner of Interferences and Examiners in Chief specifically finding that no earlier dates could be given appellant than those set out in her preliminary statement, and that appellee's proofs established beyond a reasonable doubt conception and reduction to practice prior to the dates set out in appellant's preliminary statement.

The decision of the Commissioner held that, while appellant in her preliminary statement sets up December 9, 1924, as the date of her reduction to practice, she is entitled to the date of February 19, 1924, when she filed her application, for constructive reduction to practice. He further held that upon all the testimony appellee had established conception and reduction to practice at an earlier date than conception and reduction to practice by appellant, as shown by her testimony. The Commissioner does not specifically hold, as did the lower tribunals, that appellant was confined to the dates set up in her preliminary statement for conception, disclosure, and reduction to practice, but he does note the fact, as did the other tribunals, that no motion was made by appellant to amend her preliminary statement to make it conform to the testimony produced by her.

Were we at liberty to ignore the dates set out in the preliminary statement of appellant and pass upon the case solely upon the testimony in the record, we should be compelled to find that the Commissioner and other tribunals in the Patent Office erred in awarding priority to appellee, because of the failure of appellee to sustain that burden of proof which the law requires, appellant being the senior party.

This, however, we are not at liberty to do, except as to allowing an earlier date of constructive reduction to practice. Upon this question we agree with the Commissioner that appellant is entitled to the date of filing of her application, February 19, 1924, for a constructive reduction to practice. This was permissible, because the records of the Patent Office show that...