Robbins v. Steinbart

• Decision Date: 04 April 1932
• Docket Number: Patent Appeal No. 2932.
• Citation: 57 F.2d 378,19 CCPA 1069
• Parties: ROBBINS v. STEINBART.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

19 CCPA 1069, 57 F.2d 378 (1932)

ROBBINS v. STEINBART.

Patent Appeal No. 2932.

Court of Customs and Patent Appeals.

April 4, 1932.

H. A. Toulmin and H. A. Toulmin, Jr., both of Dayton, Ohio, for appellant.

Paul A. Staley, of Springfield, Ohio, and Marston Allen, of Cincinnati, Ohio, for appellee.

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

BLAND, Associate Judge.

In this appeal from the decision of the Board of Appeals of the United States Patent Office, in an interference proceeding, the invention relates to machines for making steel wool, and the issue is confined to two counts, as follows:

"1. In a machine for manufacturing steel wool, a table, cutting tools arranged adjacent thereto, means to guide a plurality of parallel strands formed from a single wire adjacent said tools over said table, said means consisting of sheaves over which the strands are looped at either end of said table, and means for driving said sheaves to move said wires independently of the pull of the wire thereon.

"2. In a machine for manufacturing steel wool, a table, cutting tools arranged adjacent thereto, means to guide a plurality of parallel strands formed from a single wire in engagement with said tools over said table, and means to drive said guiding means so that each loop of wire will be independently driven by said guiding means whereby the driving strands will be applied to each loop independently against the resistance of the tools engaging the strand of wire of that loop."

The counts were claims 17 and 57 of the Robbins patent, No. 1,584,145, issued May 11, 1926 (application filed October 14, 1924). Steinbart's application was filed on November 27, 1923. After the issuance of Robbins' patent, Steinbart copied the two claims at issue for the purpose of interference. Robbins' preliminary statement alleged conception in January, 1921, the embodiment of the invention in a full-sized machine on the 12th day of May, 1924, and successful operation of said machine in June, 1924. Steinbart's preliminary statement alleged conception and drawings January, 1922, and "that he first embodied his present invention in a full sized machine which was completed on or about the first day of October, 1924," which was successfully operated on about said last named date. It will be noticed that Steinbart claimed a date for actual reduction to practice later than his constructive date which was the date of filing the application on November 27, 1923. After seeing the filing date of Robbins, Steinbart moved to amend his preliminary statement and sought to change his date for the first actual reduction to practice from October 1, 1924, to April 30, 1924, which motion was denied by the Examiner of Interferences.

Robbins moved to dissolve the interference for the reason that the counts could not be read upon the machine shown and described in Steinbart's application and for the further reason that Steinbart's application showed and described an inoperative device and one lacking utility. The Law Examiner sustained the motion to dissolve upon the ground that Steinbart's machine was inoperative. Steinbart appealed to the Board of Appeals, which reversed the Law Examiner's decision. The board held that the machine as disclosed was prima facie operative and stated that, "It is believed the interference should be continued in order to give the parties opportunity, if they so desire, to present testimony on the question of operativeness."

In deciding the interference issue, the Examiner of Interferences accepted the ruling of the Board of Appeals as to Steinbart's right to make the counts as conclusive, since the new testimony taken did not warrant a different conclusion. He held as follows: "No ruling is made as to whether a knife resiliently pressed against the wires would be operable in the patent sense but even if such knife would be inoperable the skill of the art would have supplied an operable knife mounting and the resulting mechanism would have satisfied the counts of this interference."

He reviewed the evidence of both parties affecting their early conceptions and rejected all evidence of both parties as proving an earlier date of conception than the date of the filing of the Steinbart application, holding that Steinbart's application was a conception and reduction to practice of the counts in interference, and priority of invention of the counts was awarded to Steinbart.

Upon appeal to the Board of Appeals, it held, as did the Examiner of Interferences and the Law Examiner, that the counts read upon Steinbart's disclosure, and said: "Appellant contends as one of the allegations of error that the counts do not properly read upon Steinbart's disclosure. It is his view that the inclusion of the term `independently' in the counts limits the counts to a machine in which some other means for advancing the wire is present other than the power sheaves. The counts were copied from Robbins' patent and were doubtless drawn in view of the disclosure where the additional winding reels are present. It is our view, however, that since the counts do not specifically include an additional means they should not be construed as limited to an apparatus in which such means is necessarily present."

Upon the question of inoperativeness of the Steinbart machine, the board said: "Taking up first the question of inoperativeness it is our opinion that the machine as disclosed in the Steinbart application is not a practical construction. The most serious difficulty as shown by the evidence relates to the mounting of the knives. The counts, however, are not specific as to this feature and since it was old in steel wool machines to employ knives in a similar way we do not consider that it would require the exercise of invention to substitute other knife mountings old in the art or modify those disclosed in the Steinbart application in such a way that a practical knife action would result. As previously stated the particular subject matter of the issue relates to the feeding of the wire and we are satisfied there is no patentable relationship here between the feed and the knife mounting. We have also considered the improper showing of the gears and the other matters dealing with the alleged improper feeding of the wire but we consider that these matters also can be readily corrected and adjusted by those skilled in the art without requiring the exercise of invention. It is our view, therefore, that the Steinbart application contains an operative disclosure of the subject matter of the counts of the issue and the fact that many of the details shown were discarded, particularly with relation to the support for the knives, we do not regard as material."

It also concluded that the testimony relating to Robbins' conception earlier than the filing date of Steinbart was not satisfactory and gave him no conception date earlier than Steinbart's application. It also rejected the Steinbart proof as establishing an earlier date of conception than his filing date. Having held that Steinbart could make the counts and that his device was operable as far as the issue of the involved counts was concerned, and having held that Steinbart was the first to conceive and reduce to practice the issues of the counts, it affirmed the action of the Examiner of Interferences in awarding priority to Steinbart. From this decision Robbins appeals here.

If our consideration of the sufficiency of Robbins' evidence to establish a conception by him earlier than Steinbart's filing date were an initial question with us, it is possible that we might have arrived at a conclusion differing from those of the two concurring...