St. Pierre v. Harvey, Patent Appeals No. 6196

• Decision Date: 15 May 1956
• Docket Number: Patent Appeals No. 6196,6197.
• Citation: 43 CCPA 918,233 F.2d 337
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Henry ST. PIERRE, Appellant, v. Draper M. HARVEY, Appellee. Draper M. HARVEY, Appellant, v. Henry ST. PIERRE, Appellee.

43 CCPA 918, 233 F.2d 337 (1956)

Henry ST. PIERRE, Appellant, v. Draper M. HARVEY, Appellee.

Draper M. HARVEY, Appellant, v. Henry ST. PIERRE, Appellee.

Patent Appeals Nos. 6196, 6197.

United States Court of Customs and Patent Appeals.

May 15, 1956.

Charles R. Fay, Worcester, Mass. (Munson H. Lane, Washington, D. C., of counsel), for St. Pierre.

Richard E. Babcock, Jr., and Watson, Cole, Grindle & Watson, Washington, D. C. (Nathaniel Frucht, Providence, R. I., of counsel), for Harvey.

Before JOHNSON, Acting Chief Judge, and WORLEY and JACKSON (retired), Judges.

WORLEY, Judge.

These appeals from the Board of Patent Interferences of the United States Patent Office involve three interferences. Appeal No. 6196 was taken by St. Pierre from the decision of the board in Interference No. 85,790, awarding priority of invention of the subject matter involved to Harvey, while Appeal No. 6197 was taken by Harvey from decisions of the board in Interferences Nos. 86,254 and 86,273, awarding priority to St. Pierre. The same testimony was presented in the three interferences and the Board of Patent Interferences disposed of them in a single decision. We shall do likewise. Interference No. 85,790, which forms the basis of Appeal No. 6196, has the broadest issue and will be considered first.

Interference No. 85,790

This interference involves application No. 16,742 filed by Harvey on March 24, 1948, and patent No. 2,538,046, granted to St. Pierre on January 16, 1951, on an application filed March 3, 1948. Harvey is thus the junior party and since his application was copending with that of St. Pierre, he has the burden of proving his case by a preponderance of the evidence.

The invention in issue is a cross chain for a tire chain defined in the following count which originated in the patent to St. Pierre of which it forms claim 1:

"1. A cross chain for a tire chain comprising a series of connected links including anti-skid elements each secured to a link and each element being in the form of a dish having concavo-convex surfaces, and having ground engaging points connected by curved lines forming the sides of the anti-skid element."

It will be seen that the count calls for dish-shaped members having ground engaging points connected by curved lines. As shown in the St. Pierre patent those members are formed by dishing square pieces of flat metal so that the corners project upwardly to form the points. The dished members are secured to the links of the cross chain by welding them to the links in such positions that the adjacent sides of the members are approximately parallel. The Harvey application shows dished members of a somewhat different form, provided with ground engaging points and attached to the links of the cross chain by cylindrical shanks which pass through the links and are free to turn therein.

It is urged here by St. Pierre that the statement in the count that the anti-skid elements are secured to the links is limited to a construction in which there is a rigid fixing as by welding, as distinguished from a rotatable attachment such as shown by Harvey. It does not appear that contention was made below; but, in any event, we do not think it sound. The word "secured" is not ordinarily limited to a rigid association of parts but includes rotatable or sliding connections, Liquid Carbonic Co. v. Gilchrist Co., 7 Cir., 1918, 253 F. 54, and there is no reason for reading a restricted meaning into it here.

The board held that St. Pierre had failed to prove conception of the invention in issue prior to a conference on February 27, 1948, at which Harvey disclosed to St. Pierre a structure satisfying the count. The board therefore held St. Pierre was not the original inventor, and awarded priority to Harvey.

The board was of the opinion St. Pierre was not an original inventor, thus Harvey's date of reduction to practice was considered immaterial, and the question whether Harvey actually reduced the invention to practice prior to his filing date is not discussed in the board's decision. However, we think the evidence establishes that the parties independently invented the subject matter in issue and it is, therefore, necessary to determine the date and sufficiency of Harvey's reduction to practice. Matters ancillary to priority may properly be considered by this court when necessary to a proper decision in an interference case, even though they were not specifically passed upon in the Patent Office. Fageol v. Midboe, 56 F.2d 867, 19 C.C.P.A., Patents, 1117, and cases there cited; and Groll v. Reid, 118 F.2d 931, 28 C.C.P.A., Patents, 1045.

Harvey's claim of actual reduction to practice is based primarily on tests of a device of the kind produced as his exhibit 2. That exhibit is a cross chain corresponding to that shown in his application No. 16,742 and satisfying the requirements of the count. The evidence satisfactorily shows that a device of that kind was made in January of 1948, and Harvey is therefore entitled to a conception date as of that time.

In that regard, however, proof of satisfactory reduction to practice is another matter. Harvey testified he put cross chains corresponding to his exhibit 2 on a car in January 1948, and drove it over a street covered with snow and ice. He stated that, as compared with conventional chains "there was a definite improvement in traction and the only defect which was apparent was there was a heavy impact due to the high profile of the first construction as it came in contact with the surface of the road."

Testimony was also given by Albert Tedesco and Albert Cotton, who accompanied Harvey. Tedesco stated that he was quite pleased with the results and that the new chains seemed to grip better than normal ones. Cotton stated that the new chains were satisfactory "as far as I could see." He fixed the distance driven during the test as "perhaps a mile and a half."

It is to be noted that the new non-skid elements were applied to conventional tire chains which, under normal circumstances, would have provided resistance to side-slipping and skidding without such elements. In our opinion it would be difficult to determine, in such a short drive, whether any substantial improvement had been effected. Moreover, even a drive of a mile and a half was sufficient to develop a definite defect, namely, that the high profile caused a heavy impact.

It is evident that repeated heavy impacts might quickly wear down the nonskid elements to a point where they would be ineffective, or might cause them to be bent or detached from the chains. Further, the sharp projections on those elements might well contact and damage the tire. Those defects would be especially likely to develop in driving over roads bare of snow, and it does not appear that Harvey's test involved driving over such roads for any considerable distance. Neither the cross chains nor the tires used in that test have been produced, and there is no evidence they were inspected after the test, or as to their condition at that particular time.

The exact extent of testing necessary to effect a reduction to practice is a matter which must be determined by the circumstances of each particular case and the nature of the device involved. Generally the tests must be sufficient to give assurance that the device will operate satisfactorily under normal working conditions for a reasonable length of time. Kruger v. Resnick, 197 F.2d 348, 39 C.C.P.A., Patents, 994.

Applying that standard here, Harvey's test of January 1948 was insufficient to establish a reduction to practice. The utility of a tire chain which shows an admitted defect in so short a distance as a mile and a half is not properly established, despite general testimony to the effect the operation appeared to be satisfactory.

Since there is insufficient evidence of the testing of any other chain by Harvey, even to the degree exhibit 2 was tested, prior to March 3, 1948, when St. Pierre constructively reduced the invention to practice by filing the application on which his patent No. 2,538,046 involved in this interference was granted, Harvey was subsequent to St. Pierre in reducing to practice. It is therefore unnecessary to consider whether St. Pierre made an actual reduction to practice.

St. Pierre introduced as exhibits 2 and 6 two tractor chains having dished nonskid elements. The board properly held they satisfied the requirements of the counts of Interferences Nos. 85,790 and 86,273, since there is nothing in those counts which would limit them to chains for passenger cars as distinguished from tractors.

St. Pierre testified he directed that exhibit 2 be made in 1946, and that exhibit 6 was made "between '46 and '47." He stated they were tried out on a farm and that he was satisfied he had a commercial product. His witness Resseguie testified that he assisted in making St. Pierre exhibit 2 at some time in 1946, fixing the date as being before a strike which took place in 1947, and that it was tried out on a tractor. He also testified that exhibit 6 was made and tried out in 1946.

The witness Vancellette testified that St. Pierre's exhibit 6 was made and assembled in the fall of 1947. He fixed the date as being immediately after the strike which took place in the summer of that year, and stated the exhibit was tested on a tractor before the snow which started before Christmas of that year.

Another St. Pierre witness, Trudeau, testified that he tested exhibit 2 at two different times in 1946 and that he tested exhibit 6 in the fall of 1947 before he left for Florida on November 15 of that year. He fixed the date when he tested exhibit 2 as being before the 1947 strike, and the date of testing of...