Rieser v. Williams, Patent Appeal No. 6367.

• Decision Date: 23 May 1958
• Docket Number: Patent Appeal No. 6367.
• Citation: 118 USPQ 96,255 F.2d 419
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: John D. RIESER, Appellant, v. William A. WILLIAMS, Appellee.

118 USPQ 96, 255 F.2d 419 (1958)

John D. RIESER, Appellant, v. William A. WILLIAMS, Appellee.

Patent Appeal No. 6367.

United States Court of Customs and Patent Appeals.

May 23, 1958.

George B. White, San Francisco, Cal., for appellant.

Paul & Paul and Austin R. Miller, Philadelphia, Pa. (Henry N. Paul, Jr., Philadelphia, Pa., of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY and RICH, Judges.

O'CONNELL, Judge.

This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention of the subject matter in issue in interference No. 86,744 to the senior party, William A. Williams, the appellee here. The invention in issue is an adjustably mounted speed change unit defined in three counts. Count 1, which is typical, reads as follows:

"1. A speed change transmission comprising, a driven shaft, a journal support for said driven shaft, a prime mover and a speed change device operably coupled to form a speed change unit, said speed change device having a power take-off including means to couple it rigidly about a portion of said driven shaft, a universal support for said speed change unit including, a support element, a spherical portion on said support element, a base member adapted to be secured to a foundation and adjustably engaging said spherical portion for supporting said support element, said spherical portion being coaxial with the longitudinal axis of said power takeoff, and said rigidly coupled driven shaft being journalled in said support element for supporting said speed change unit so as to permit said universal support to position said speed change unit to compensate for parallel and angular mounting misalignment between said longitudinal axis and said base member."

The counts originated in the patent of appellant, John D. Rieser, which was granted July 22, 1952, on an application filed March 30, 1951. The Williams' application here involved was filed October 19, 1950.

The Rieser patent discloses a unitary device comprising a motor and a speed change gear mechanism, connected by a belt and supported on a common mounting means. The mounting means comprises a laterally extending projection having a convex spherical surface. The axis of a hollow output shaft, which is driven by the change speed mechanism, passes through the center of the sphere which forms the above-mentioned surface, and the shaft is referred to in the counts as being "coaxial" with that surface. The spherical surface of the projection is received in a correspondingly shaped concave portion of a bracket member which is adjustably mounted on a horizontal portion of the frame of the machine or other device which is to be driven. The shaft of the driven device extends coaxially into the hollow output shaft of the speed change mechanism and is rigidly secured thereto.

The Williams' application discloses a speed change device which in one embodiment comprises a gear casing having a lateral projection with a convex spherical surface which is received in and supported by a corresponding concave spherical portion of a bracket member supported adjustably on a vertical surface of the frame on which the pulley to be driven by the device is mounted. The speed change device includes a hollow output shaft which passes through the lateral projection and is adapted to receive and be rigidly secured to the shaft of the driven pulley. Power is supplied to the device through a pulley mounted on an input shaft coaxial with the output shaft, but it is stated in the specification of the application that "an incorporated electric motor" may be used instead.

Rieser makes three separate contentions as to why he should have been awarded priority, namely; first, that Williams is estopped to contest priority by reason of the fact that he did not copy the claims corresponding to the counts in issue from Rieser's patent until more than a year after it was issued; second, that the disclosure of Williams' application does not support the counts; and third, that Rieser conceived the invention in issue prior to Williams and exercised reasonable diligence over the critical period in reducing it to practice. These contentions, as to each of which the Board of Patent Interferences ruled adversely to Rieser, will be considered in the order above given.

It is not disputed that Williams failed to present the actual claims here in issue in his application until more than a year after they appeared in Rieser's patent. The Board of Patent Interferences held, however, that an estoppel under 35 U.S.C. § 135 did not exist for the reason that allowed claim 6 of the Williams' application, which was included therein as filed, defines substantially the same subject matter as the interference counts. Claim 6 of Williams, and claim 1, on which it is dependent, read as follows:

"1. In combination, a powered speed change device having a casing and an output shaft extending through one side of the casing and adapted to be fixedly attached in axial relation to one end of the shaft of a machine or apparatus to be driven; a supporting bracket; means for rigidly securing the bracket to a stationary member of the machine; and means whereby the device is connected to the bracket with capacity for limited play to compensate for flexure of the shaft of the machine or apparatus, and to serve as the sole means for rotatively sustaining the aforesaid end of the latter shaft.

"6. The invention according to claim 1, wherein the connecting means comprises a spherical projection at one side of the casing of the device constituting the bearing for the output shaft and fitting a spherical socket opening in the bracket."

It is apparent that Williams' claim 6 is broader than the counts, but the board found that the additional limitations defined by the counts were of no patentable significance.

The first limitation in claim 1 which does not appear in claim 6 of Williams is that the motor which drives the speed change mechanism forms a unit with it, which unit is supported by the spherical portion of the projection. In our opinion that distinction involves no more than a choice of obvious mechanical expedients. Whether a motor is mounted rigidly with or separately from the device or gearing which it drives is a matter of choice well within the province of a skilled mechanic. The problem of affording universal support for the speed change unit is substantially the same whether or not the motor is supported with it.

The counts refer to the member which supports the spherical projection as "a base member adapted to be secured to a foundation," while Williams' claim 6 refers to it as "a supporting bracket." Those expressions are substantially equivalent, since "base" means a supporting member, broadly, and a bracket is a conventional form of supporting member.

The counts further state that the spherical portion of the support element is "coaxial" with the longitudinal axis of the power takeoff, while Williams' claim 6 does not include such a limitation. We agree with the board, however, that that distinction has no inventive significance. The exact location of the axis of the power takeoff with respect to the support is a matter of design and convenience and it would be an obvious expedient to make the two coaxial.

Count 1 states that the driven shaft is journalled in the support element, which, in the light of Rieser's disclosure, means that the power takeoff, which surrounds the driven shaft, has a bearing in the support element. Claim 6 of the Williams' application states that the "spherical projection," which corresponds to the support element of the counts, constitutes the bearing for the output shaft (power takeoff). In our opinion, count 1 and Williams' claim 6 are fully equivalent in that respect.

Counts 1 and 3 also state that...