Sloan v. Peterson

• Decision Date: 01 June 1942
• Docket Number: Patent Appeals No. 4519-4521.
• Citation: 129 F.2d 330,29 CCPA 1055
• Parties: SLOAN v. PETERSON et al. (two cases). PETERSON et al. v. SLOAN.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

29 CCPA 1055, 129 F.2d 330 (1942)

SLOAN v. PETERSON et al. (two cases). PETERSON et al. v. SLOAN.

Patent Appeals Nos. 4519-4521.

Court of Customs and Patent Appeals.

June 1, 1942.

Donald M. Carter, of Chicago, Ill., for Sloan.

Edmund H. Parry, Jr., of Washington, D. C. (Herbert H. Porter, Mason & Porter, and Edward B. Beale, all of Washington, D. C., of counsel), for Peterson et al.

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

HATFIELD, Associate Judge.

These are appeals in interference proceedings from the decisions of the Board of Appeals of the United States Patent Office. In appeals Nos. 4519 (interference No. 75,856) and 4520 (interference No. 75,857), appellant, William E. Sloan, has appealed from the board's decisions affirming the decisions of the Examiner of Interferences awarding priority of the inventions defined in all of the counts — Nos. 1, 2, and 3, in interference No. 75,856, and 1 to 5, inclusive, in interference No. 75,857 — to appellees Walker F. Peterson and Albert U. Walter. In appeal No. 4521, appellants, Walker F. Peterson and Albert U. Walter, have appealed from the decision of the Board of Appeals affirming the decision of the Examiner of Interferences awarding priority of the subject matter defined in counts 6 and 7 in interference No. 75,857 to appellee William E. Sloan.

Owing to the fact that the evidence pertaining to the two interferences has been presented in a single record, we shall dispose of the issues presented in one opinion.

Appeal No. 4519 Interference No. 75,856

The interference is between the application of William E. Sloan, No. 194,633, filed March 8, 1938, and appellees' (Walker F. Peterson and Albert U. Walter) patent No. 2,089,223, issued August 10, 1937, on an application filed February 10, 1936. Appellant is the junior party and, as his involved application was filed subsequent to the issuance of appellees' patent, the burden would be upon him to establish priority of invention beyond a reasonable doubt were it not for the hereinafter related facts and circumstances. At the close of his rebuttal testimony, appellant, pursuant to rule 154(e) of the Rules of Practice in the United States Patent Office, 35 U.S.C.A. Appendix, offered in evidence his patent application, serial No. 128,931, filed March 4, 1937, which, it is argued in the brief of counsel for appellant, discloses the invention defined by the counts in issue. It is further argued in the brief of counsel that, as appellant's earlier filed application was copending with the application which matured into appellees' involved patent, appellees' patent was issued inadvertently, and that, therefore, appellant has the burden of establishing priority of invention by a preponderance of the evidence, not by evidence beyond a reasonable doubt. Although appellees moved to strike appellant's application No. 128,931 from the record, the Examiner of Interferences, for reasons not of importance here, overruled the motion and held that that application was properly before him. However, without discussing the disclosure contained in that application or holding that such application did not disclose the involved invention, the Examiner of Interferences held that the burden was upon appellant to establish priority of invention beyond a reasonable doubt. On appeal to the Board of Appeals, appellant assigned as error that holding of the Examiner of Interferences. The Board of Appeals, however, did not discuss the disclosure contained in appellant's application No. 128,931, nor did it state what degree of proof was required of appellant. Accordingly, we are here confronted with an issue neither discussed nor decided by the tribunals of the Patent Office, to wit: Does appellant's application No. 128,931 disclose the involved invention? If it does, there being continuity between that application and appellant's involved application, the burden was upon appellant to establish priority of invention by a preponderance of the evidence. Spaulding v. Norden, 1904 C.D. 439, 442, 443; White v. Trube, 1277, 84 F.2d 216, 23 C.C.P.A., Patents, 1275; Becket v. Arness, 112 F. 2d 1011, 27 C.C.P.A., Patents, 1251. If, on the other hand, appellant's earlier filed application does not disclose the involved invention, the burden was upon appellant to establish priority of invention beyond a reasonable doubt. Walker v. Altorfer, 111 F.2d 164, 27 C.C.P.A., Patents, 1130; Van Cleef v. Tierney, 118 F.2d 911, 28 C.C.P.A., Patents, 1039; William G. H. Finch v. Garett Van Der Veer Dillenbach, Jr., 121 F.2d 459, 28 C.C.P.A., Patents, 1171.

The involved invention relates to a device for obtaining a quiet flow of water in the flushing of water-closets, and, for the purpose of convenience, may be referred to as a "quiet flow retarding" or throttling device.

As is well known, the flushing of a water-closet bowl may be accomplished either by means of a flush valve directly connected between the water-supply line and the toilet bowl, or by means of water contained in a "gravity discharge flush tank." When a "gravity discharge flush tank" is used, the water is supplied to the tank by means of a valve controlled by a ball cock.

It appears from appellees' patent, in which the counts originated, that the quiet flow retarding or throttling device may be located between the flush valve and the toilet bowl, or it may be located between the water-supply line and the flush valve.

The device in question is sufficiently defined in the involved counts of which count 3 is illustrative. We quote count 3: "3. A quiet flow retarding device for liquids comprising means providing a conduit, and a body located in said conduit and supported against axial movement relative thereto, the internal wall of the conduit and the adjacent wall of the body providing an annular space which remains constantly open during the operation of the device for the flow of liquid and which causes the liquid to flow in a sheet having a thickness of less than 0.125 inch for a length in the direction of the flow of more than ten times the thickness of the sheet."

It will be observed that in the device called for by the quoted count, the internal wall of the conduit and the adjacent wall of the body located in the conduit provide an annular space for the flow of liquid therethrough. During the operation of the device, the liquid is caused "to flow in a sheet having a thickness of less than 0.125 inch for a length in the direction of the flow of more than ten times the thickness of the sheet."

Although counsel for appellant has, in his brief, compared the elements in the involved counts with the disclosure in appellant's earlier filed application and has argued with considerable plausibility that that application discloses the involved invention, counsel for appellees have not informed the court as to their views regarding the disclosure in that application, nor have they attempted to answer the arguments presented here by counsel for appellant.

Appellant's earlier filed application relates to a flush valve in combination with a throttling device. The throttling device comprises a cylindrical body or plug located in a cylindrical conduit, having an "annular space" about .015 inch in diameter between the inner wall of the conduit and the outer wall of the body located therein to permit the flow of water therethrough. The wall of at least one of the surfaces, that is the surface of either the wall of the conduit or of the body located therein, is roughened.

It is argued here by counsel for appellant that the "annular space" disclosed in appellant's earlier filed application extends for a distance in the axial direction of the flow of water more than ten times the width of such annular space, as called for by the counts in issue. Counsel for appellees do not challenge that statement, and, although we are not entirely clear that appellant's earlier filed application discloses that limitation, we shall assume for the purpose of this decision that it does.

We hold, therefore, that appellant's earlier filed application discloses a throttling device conforming to all of the limitations contained in the counts in issue, and that the burden was upon appellant to establish priority of invention by a preponderance of the evidence.

It may be observed at this point that appellant states in his earlier filed application that the flush valve, which includes the throttling device in combination, is "designed to give a rate of flow during the flush period ranging between twenty and twenty-five gallons a minute" at pressures ranging from five to one hundred pounds to the square inch. (The importance of that feature of appellant's disclosure in that application will appear more clearly hereinafter.)

Counsel for appellant contended before the tribunals of the Patent Office, and contends here, that appellant has established that he conceived and reduced to practice devices (appellant's exhibits 2, 7, and 13) conforming to the involved counts in 1933. The Examiner of Interferences held, however, in which holding the Board of Appeals concurred, that those exhibits do not conform to the limitations contained in the counts in issue in that the body members within the conduits of those devices were made of perforated discs and, in the operation of those devices, the flow of water was through the perforations in the discs and not in a "sheet" through an annular space between the discs and the walls of the conduits, as called for by the counts in issue. In his decision, the Examiner of Interferences described and discussed those exhibits in considerable detail, and as the record fully substantiates the holding of the tribunals of the Patent Office that, for the reasons stated by those tribunals, the exhibits do not conform to the structure defined by the counts in issue, we deem it unnecessary to discuss them here. If, however, by a somewhat strained...